Synthesis of the Issues in Non-Obviousness
Along with being useful and novel, a patent must also not be obvious. This "nonobviousness" is hard to qualify, but the courts and congress have tried over the past 160 years.
The idea of nonobviousness first originated in the case of Hotchkiss v. Greenwood (1850). In this case, it first became clear to the supreme court that something needed to be done to keep simple innovations from acquiring a new patent, all but halting the stream of new ideas that patents are supposed to encourage. Because of this, it is necessary to establish a basis to disqualify inventions based on the obviousness of the invention. In this original case, the important phrase, "ingenuity and skill ... possessed by an ordinary mechanic acquainted with the business," was first used to describe the basic principle of what made an invention obvious. Using this basis, the laws of nonobvious have been written an rewritten over the past 160 years to bring them to where they are today.
Another key principle of nonobviousness was established in A&P Tea v. Supermarket Equipment (1950). It was in this case that the idea of the sum of the parts needs to be improved upon to be awarded a patent. While this idea is not still in use, it lays down a basis for the Patent Act of 1952 to establish an overarching law. Along with this, the idea of secondary criteria for patent obviousness was developed, with a "long felt but unsatisfied need" being present. Thirdly, the very point of a patent was examined, and the consensus was that a patent should be for the advance of science and should not hinder it.
The Patent Act of 1952 was just an act by congress to record the rules that the judicial branch had laid down. The code states "A patent may not be obtained…if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." This key development in patent law marks the culmination of the nonobviouness idea that had been in the works for 100 years.
Yet, the work on patent law was not done. In Lyon v. Bausch & Lomb (1955) the secondary criteria for nonobviousness was established and spelled out. It was one of the first cases to look at other inventors and analyze their attempts and failures to try and develop a process that would work for coating lenses. Even though thee final result was only one added heating step, the time and effort that previous experimenters had invested proved that it was no small advancement.
In Graham v. John Deere (1966), the idea of "inventiveness" was first introduced. This is the idea that a development must include some level of invention. This is similar to the idea from the A&P case, but it more rigorously defines the criteria.
With the case of US v Adams (1966), the courts reconfirmed the idea that even if the parts of an invention were obvious or priorly patented, if it accomplished something that was unexpected in an unexpected way, that is patentable. Even though open cell batteries had been used, and it was possible batteries had used water, it was still not an obvious invention because of the unexpected results.
In Anderson's Black Rock v. Pavement Salvage (1969), the rules were turned once again. The supreme court decided that the heated roller (patented) and the paving machine (patented) in combination was not enough to warrant a patent. The combination of the two patents was not enough to issue a new patent, and the use of the burner is infringement. This seems like a reasonable ruling, because it was not an improvement, but rather seems like a way to try to avoid dealing with the patent for the burner. But, it was still a case that upended the previous notion on nonobviousness.
This ruling was confirmed once again in KSR International Co. v. Teleflex Inc. (2007). The "Adjustable Pedal Assembly with Electronic Throttle Control" was a combination of an adjustable pedal assembly, a support pivot, and an electronic control. This combination had been taught, suggested, and motivated (TSM) by the prior art, so it was an obvious configuration of the prior art. These elements of TSM are key to determine obviousness, but they cannot be applied too rigorously because that is not the law to be followed as congress and previous cases decided.
All of these rulings have lead to the formation of the nonoviousness of patents. Elements of the sum of parts being greater than the whole, a normal mechanic's skill in the art, TSM, a long-felt, unmet need, and previous failures all contributed to what the courts and patent office now use to judge the obviousness of inventions. This will most definitely continue to evolve, but we are much closer to a rigorous definition than before 1850. A patent is something that must be earned, and not something that is found easily and hinders the progress of science.
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.
Hotchkiss v. Greenwood (1850)
Prior to Hotchkiss v. Greenwood an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of nonobviousness.
- ...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.
- The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.
- But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.
- Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.
- But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.
- The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.
It can be seen in this pronouncement of the court opinion by Justice Nelson, that the original requirement of novelty is not satisfactory, as the knob designed by Hotchkiss is a new product. Although the term "nonobviousness" will not be developed for some time, the court's decision hinges on the fact that the mere substitution of better suited materials is too obvious a development to warrant a patent. The fundamental premise of nonobviousness is presented a few paragraphs later, as Justice Nelson states,
- "....unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingeunity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor."
Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field.
A&P Tea v. Supermarket Equipment (1950)
While it pre-dates the language of section 103, A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) discussed some of the more difficult issues related to the level of invention. In particular, this case dealt with three significant issues related to the process of determining patentability:
- First, that the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
The importance of a "long felt but unsatisfied need" in the determination of nonobviousness is that it is difficult to claim that an invention is obvious if there has been a demand for a certain product and no one has been able to fulfill that need. However, it is important to note that there are two requirements that must be met here. There must be a need for the product and the need must have existed for a long time. If the need is relatively new, then it is difficult to claim that a person with ordinary skill in the field would have not developed such a design had he been aware of demand for such a device. On the other hand, if the market related to a certain field has provided no sign that there is a need for such an improvement, then it can be argued that the design would have been obvious had anyone expressed interest in the proposed device.
- Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
In Graham v. John Deere, the history of the patent process is discussed, particularly Thomas Jefferson's outlook on the purpose of providing a patent. Jefferson made it clear that patents were only to be granted for inventions that furthered human knowledge and were new and useful. The granting of patents for small details, obvious improvements, or frivolous devices was neither worthwhile nor helpful. In A&P v. Supermarket Corp., Jefferson's sentiment is echoed, except the focus of the court is narrowed further to the important frontier of science and engineering. As Justice Douglas states, "the purpose is to promote the Progress of Science and Useful Arts," and the two disciplines most associated with progress at that time (and still currently) are science and engineering. Even later, the court states, "patents serve a higher end-the advancement of science," which make this point very clear.
- Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
The court's outlook on the evaluation of patents in regard to the combination of prior elements is best summarized in the following explanation. "The mere aggregation of a number of old parts or elements which, in the aggregation, peform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention....only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."
35 USC 103 (1952)
This section of the code was adopted in 1952 and prohibits a patent in a case where
- the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Lyon v. Bausch & Lomb (1955)
In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:
- Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
Graham v. John Deere (1966)
In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
- scope and content of the prior art;
- differences between the prior art and the claims at issue;
- level of ordinary skill in the pertinent art; and,
- secondary considerations, including:
- commercial success of the invention;
- long-felt but unsolved needs;
- failure of others to find a solution, etc.
U.S. v. Adams (1966)
- 1966: US v. Adams, 383 U.S. 39 (1966) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.
Anderson's Black Rock v. Pavement Salvage (1969)
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969) by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.
Suggestion to Combine
In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.
- "When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
- "[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.
Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.
- A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
- The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
- This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.
The Inventive Step
- This is the step that it takes to go beyond what the average mechanic in the art could come up with. A key example of this is in the Lyon v. Bausch & Lomb (1955) case where many had tried, but the step of heating the glass during coating made the ultimate difference, and was therefore the inventive step in the process.
Relationship with Novelty
- Novelty is very similar to nonobviousness. Novelty describes a product that is just new and has not been seen before, while nonoviousness describes a new development on a product that does make it novel, but also must make it novel enough to meet the criteria.
Nonobviousness vs. Invention
- In order for an invention to be nonobviousness, it must be inventive. If the invention required no real ingenuity, then it is not inventive.
- These are ideas that can be used to aid in the decision of obviousness. They can help describe where the invention came from and how it was either obvious or not. Despite this, it is still secondary to the primary concerns of 35 USC 103.
- Long-felt unsatisfied need
- Commercial success
- Failure of others
- Skepticism of experts
- Teaching away of others
- Unexpected results