EB: Wednesday, February 9: Edit of Nonobvious Wikipage

Nonobviousness: Exposition of the Issues

The United States Constitution grants Congress the power to bestow exclusive rights to authors and inventors for their discoveries, in order to “promote the Progress of Science and useful Arts.” As Justice O’Connor notes in her decision of Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989), this basic constitutional phrasing implies the required "balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in the 'Progress of Science and useful Arts.'" Nonobviousness has developed into a primary criterion for determination of whether or not a claimed invention represents a sufficient advance in the science or useful art in question.

The Patent Act of 1790 acknowledged the need for an invention to be “sufficiently useful and important” in order to deserve patent protection, and Jefferson confirmed the need for “drawing a line between things which are worth the public embarrassment of an exclusive patent, and those which are not.” Nonobviousness represents the final test for novel, useful claims which must also possess a certain level of “importance” to be “worth the public embarrassment of an exclusive patent.”

An 1850 decision by the Supreme Court in the case of Hotchkiss v. Greenwood, 52 U.S. 11, it was determined that because the improvement was simply “the work of the skillful mechanic, not that of the inventor” the claims in question lack the “degree of skill and ingenuity which constitute essential elements of every invention.” In other words, an invention must achieve advancement beyond that of ordinary skill in the art in order to deserve patentability. This basic principle was later established as the foundation of nonobviousness by the Patent Act of 1952, establishing it as an integral part of patent law in 35 USC 103. This section of the U.S. 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.”

The decision in Hotchkiss v. Greenwood was driven by a basic issue of obviousness: substitution of materials. The court ruled that substitution of porcelain/clay for traditional wood in manufacture of doorknobs could not in itself constitute a patent. While such substitution of material “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…the difference is formal, and destitute of ingenuity or invention.” Thus, the court established that such a substitution of materials is, using terminology that post-dates the ruling, obvious: an improvement that could easily have been made by someone of ordinary skill in the art.

The patentability of combinations of known elements is another genre in which application of nonobvious criteria is vital. At a basic level all inventions can be considered combinations of known elements as most progress must be derived from at least some previously explored principles; however, as was ruled in A&P Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) the combination must possess “some new quality or function” in order to be patentable. If the invention lacks any “additional or different function” than it must be considered an obvious extension of the prior art. This ruling was well expressed by Justice Jackson: “A patent for a combination which only unites old elements with no change in their respective functions…obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”

This position regarding combinations of known elements is later reaffirmed in the case of Anderson’s Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969). In this case the combination of a radient-heat burner with previously known paving devices did not “produce any new or different function,” and thus was ruled obvious and unpatentable.

In addition to addressing the issue of combinations of known elements, A&P Tea Co. v. Supermarket Corp. also expressed a strict level of nonobviousness, stating that in order to justify a patent an invention must “push back the frontiers of chemistry, physics, and the like…make a distinctive contribution to scientific knowledge.” Such bias toward more scientifically advanced inventions has not been maintained in modern patent law. The Patent Law of 1952 does not hold patentability to such highly scientific standard, but does definitively confirm the necessary nonobvious characteristic for patentability. In other words, an invention need not be at the “frontier” of science but it must, nonetheless, be an improvement beyond that which could obviously be made by a person of ordinary skill in the art. In his decision in the case Lyon v. Bausch & Lomb, 224 F.2d 530 (1955), Justice Learnerd Hand acknowledges the loosening of nonobvious standards from precedent pre-dating the 1952 Patent Act (such as A&P Co. v. Supermarket Corp.); he states that “had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952…it is almost certain that the claims would have been held invalid.” Nonetheless, Justice Hand ruled the patent in question valid, citing evidence which would later be deemed secondary considerations of nonobviousness. The evidence was comprised of the following facts: (1) a long-standing, unsatisfied need for the invention existed before Lyon’s invention, (2) numerous attempts of other “competent workers” to satisfy the need had failed prior to Lyon’s invention, and (3) Lyon’s invention “supplanted the existing practice and occupied substantially the whole field” upon its introduction. Further secondary considerations of nonobviousness were established in U.S. v. Adams, 383 U.S. 39 (1966). In this case, Adams’ invention was deemed nonobvious due to the fact that his improvement to battery technology was wholly unexpected, even prompting initial disbelief from experts, and was in fact contradictory to previously established teachings. Factors such as those listed above are now important, well established means for providing evidence of nonobviousness.

A more structured framework for determining the nonobviousness of an invention was expressed in the 1966 case of Graham v. John Deere, 383 U.S. 1. The court established four major elements of determining obviousness: (1) Determine the “scope and content of the prior art,” (2) Identify “differences between the prior art and the claims at issue,” (3) determine the “level of ordinary skill in the pertinent art,” and (4) Utilize secondary considerations to “give light to the circumstances surrounding the origin of the subject matter sought to be patented.”

It is important to note the sensitivity with which secondary considerations need be treated. Although these considerations can indeed provide useful insight (as in Lyon v. Bausch & Lomb), in some cases, such as Calmar, Inc. v. Cook Chemical Co., can be irrelevant given the state of primary considerations of patentability. In the case of Calmar, Inc. v. Cook Chemical Co. a long standing need for the invention existed and the invention achieved great commercial success (both secondary considerations), but the court ruled that those considerations could not “tip the scales” of patentability because on a more fundamental level the invention rested “exceedingly on small and quite nontechnical mechanical differences in a device which was old in the art.” Thus, the invention did not meet the standards of the second obviousness criteria expressed in Graham v. John Deere.

Due to the complexity of the nonobvious issue, lower courts have attempted to develop more succinct methods for determining obviousness. One such attempt was made in the KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), which utilized the “TSM test.” According to this test, a claim is only obvious if there can be found some “teaching, suggestion, or motivation” for the invention in the prior art. This type of test was ruled to be prone to creating “rigid and mandatory formulas” and was thus deemed in conflict with proper interpretation of 35 USC 103.

In conclusion, in order to achieve nonobvious a claim must prove to be more advanced than what is achievable by someone of ordinary skill in the art. In order to make such a distinction the court must examine the prior art and how it relates to the claims in question, as well as exploring secondary consideration that may shed light on the circumstances.

Historical Development

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.

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.

• First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.

However, despite this long-standing need and the commercial success of the invention (secondary considerations), the patent was deemed invalid because the court ruled that "commercial success without invention will not make patentablity."

• Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.

The triviality of the invention (an extension of a cashier counter), was continually cited; it was described as the "mere change of dimensions of an old device" - clearly not at the "frontier" of science, as the court's decision expresses patentable material must be. This high standard of "cutting-edge" science patentability will not hold in later court decisions.

• Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

The court rules that combinations of known elements are not patentable unless they provide some additional function in their combined state: "A patent for a combination which only unites old elements with no change in their respective functions…obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

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.

• The court cited several pieces of evidence proving the nonobvious nature of Adams' invention:
  • The combination of elements involved in Adams' invention was unexpected in the art. In fact, experts expressed initial disbelief in his concept.
  • Adams' invention was contrary to prior teachings in the art; his discovery involved experimentation with ideas which had known disadvantages according to the prior art. Adams' invention ignored two things generally accepted in prior art (1)open circuit batteries are not practical (2) water-activated batteries were previously only successful with electrolytes detrimental to the use of magnesium

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.

• The court found that "each of the elements combined in the patent was known in the prior art." Furthermore, despite the fact that the "combination of old elements performed a usefulfunction, it added nothing to the nature and quality of the radiant-heat burner already patented." Thus, because the radiant-heat burner was the key difference from prior art, and the radiant-heat burner itself was known in prior art the combination "was reasonably obvious to one with ordinary skill in the art."

The combination of putting together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a "new or different function"

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.

Objective Tests

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

The "inventive step" refers to the added ingenuity (beyond that possible by someone of ordinary skill in the art) which is required to constitute invention. For example in Lyon v. Bausch & Lomb (1955), other experimenters (namely, Cartwright) failed to take the key step of continually heating the optical surface during coating.

"the art never took Lyon's second step, now generally accepted as teh way to secure the optimum bond of the coating to the glass"

Relationship with Novelty

A claim must prove to be novel, useful, and nonobvious in order to be patentable. Novelty, under 35 USC 101, states that a claim must be unknown to the prior art, "new," in order to deserve a patent. Even if an invention is indeed new, it must still meet the nonobviousness standard testing whether the invention is "important" enough to warrant a patent.

Nonobviousness vs. Invention

In order for a claim to be considered a true invention (i.e. patentable material), it must be nonobvious. In order to be nonobvious, a claim must achieve a certain standard of "inventiveness." This idea of "inventiveness," which was used in early patent law, is further developed into the structured criteria of nonobviousness which are discussed in Graham v. John Deere (1966).

Secondary Considerations

Secondary considerations must be utilized to “give light to the circumstances surrounding the origin of the subject matter sought to be patented” (Graham v. John Deere). These considerations cannot overcome the basic nonobvious criteria of examining the prior art, analyzing differences, and considering what constitutes "ordinary skill," but they can provide useful evidence for nonobviousness in conjunction with primary considerations.

• Secondary considerations include:
  • a long-felt but unsatisfied need met by the invention;
  • appreciation by those versed in the art that the need existed;
  • substantial attempts to meet this need;
  • commercial success of the invention;
  • replacement in the industry by the claimed invention;
  • acquiescence by the industry;
  • teaching away by those skilled in the art;
  • unexpectedness of the results; and,
  • disbelief or incredulity on the part of industry with respect to the new invention.

Ordinary Skill in the Art

Determination of "ordinary skill in the art" is the key determining factor of nonobviousness. Often the extent of the "ordinary skill in the art" is determined by expert witnesses or examination of published works in the art.

Reiner v. I. Leon Co. (full text)

Reiner v. I. Leon Co.

South Corp. v. US (full text)

South Corp. v. US