Eric Paul's Nonobviousness - 9 FEB 2011

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.

Hotchkiss v. Greenwood institutes language that would later be made into law by congress in Section 103. The court applied the test, "that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void." This would later become law in section 103 which states that "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...to a person having ordinary skill in the art." The court concluded that the construction of the knob was, in fact, obvious to an individual possessing ordinary skill in the art, concluding that, "the improvement is the work of the skillful mechanic, not that of the inventor."

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.
  • While the court recognized that the patent had enjoyed commercial success, it also explained that, "commercial success without invention will not make patentability." The fact that a product is received well by others associated with the art does not mean that it deserves a patent unless it adequately advances knowledge in the art. Commercial success could indicate nonobviousness because success proves that it is a desirable product. If it was obvious then someone else would have already created it to meet that desire. This will become a secondary consideration in later cases to determine whether the patent is obvious or not. In this situation, the court decided that the commercial success did not demand a patent for the product.
• 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 its decision, the court called attention to the Constitution's statement on patents that they are, "to promote the progress of science and useful arts." According to the court, a patent must significantly advance knowledge in a science or some similar field. They should not be given for simple improvements and gadgets. A patent gives the individual a monopoly on the product. If patents are given for every simple idea then they would impede the development of industry. According to the court, a patent, "has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance."
• Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.
  • This case discusses issuing patents for an item which is a combination of old products. The court sites an old case when it says, "the mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not a patentable invention." In other words, a combination is not patentable if it does not accomplish a new goal that sufficiently advances knowledge in the art. The court continues by saying that, "only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable." More cases will arise in later years that deal with patents that are obvious combinations of old products. Indeed, unless the patent is for a newly discovered element, every product contains old products. However, in order to merit a patent, the combination must perform an advanced function beyond that of its parts.

35 USC 103 (1952)

This section of the code was adopted in 1952. It deals with the nonobvious requirement for patents. Paragraph (a) is written as follows:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made.

The beginning of the paragraph refers to section 102. The invention must first satisfy the requirements for novelty as laid out in the previous section of title 35 in order to be considered for a patent under the stipulations of section 103. Next, the code explains that in order to be eligible for a patent the differences between the invention in question and the prior art must not be obvious to an individual with ordinary skill level in the art. In other words, the improvements that separate the new invention from the prior art must not be obvious to someone with regular expertise in the particular subject matter. This statement leads to a process for determining obviousness that will be laid out in Graham v. John Deere. This process involves basing decisions for nonobviousness after analyzing the "scope and content" of the prior art, the differences between the new invention and the prior art, and the ordinary skill of an individual in that art. The final sentence of the paragraph in section 103 means that the process by which the inventor develops his product or process can be disregarded when considering its patentability. The complexity of a development process does not make an invention any more or less obvious. It is possible for a nonobvious improvement to be the result of a simple change, previously overlooked.

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

In the above passage, the court touches on two key points that can be considered secondary considerations used towards determining the obviousness of an invention. It states that, "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." This explanation points out that those possessing at least ordinary skill in the art had tried and failed several times in the past to solve the same issue fixed by Lyon's product. This fact leads one to believe that the product was a nonobvious creation. Had it been obvious, then others would not have failed in their endeavors. Additionally, the court points out that Lyon's product, "supplanted the existing practice and occupied substantially the whole field." This further highlights the desire for a non-reflective lens in the art. Great demand for a product would lead one to consider that the development is nonobvious. If it was obvious, the product would already have been created in order to meet that demand. It is something to consider when debating the obviousness of a product. If there is little demand for the product, then perhaps it was an obvious invention, and the reason it was not created was because nobody desired the product. From Lyon v. Bausch & Lomb, one can take away two secondary considerations for determining the obviousness of a product. These are previous failed attempts to create the product and reception of the product by those associated with the art.

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." Using the term "inventiveness" was decided to be too ambiguous for the courts, creating a wide range of rulings on what was inventive or not. It is hard to quantify an abstract characteristic like "inventiveness." The court referred to invention saying, "the truth is the word cannot be defined in such a manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not."

At the same time of changing the terminology to include "nonobviousness". The court set up criteria to determine nonobviousness, which primarily involves observing the following:

• 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;

In addition to these main components, this case also discussed several key secondary considerations which can be taken into account when determining nonobviousness. These are:

• commercial success of the invention;
• long-felt but unsolved needs;
• failure of others to find a solution

The above secondary considerations were all discussed in the case Colgate-Palmolive Co. v. Cook Chemical Co, with the side of Cook Chemical stating the above reasons as proof that their product deserves a patent. The court supported such considerations, admitting that the judges need assistance in evaluating technical patents. Other evidence for the nonobviousness of a product that is not technical can assist judges, void of technical backgrounds. This is affirmed when the court states, "These legal inferences or subtests do focus attention on economic and motivational rather than technical issues and are, therefore, more susceptible of judicial treatment than are the highly technical facts often present in patent litigation." While the court supported these "subtests", it admitted that they were not strong enough to prove patentability for Cook Chemical saying, "these factors do not, in the circumstances of this case, tip the scales of patentability."

U.S. v. Adams (1966)

• 1966: US v. Adams, 383 U.S. 39 (1966) In this case, several more secondary considerations were affirmed for the determination of nonobviousness. The first is when the product is an unexpected result. The changes made by Adams, at the time, were considered impractical. It was said in the ruling that, "the operating characteristics of the Adams battery have been shown to have been unexpected and to have far surpassed then-existing wet batteries." A product cannot be obvious if it was an unexpected result of the design process. A second consideration can be found in this statement. The new wet battery was a significant improvement over contemporary wet batteries. As mentioned previously in the Lyons case, this is a consideration for nonobviousness. Another principle supporting nonobviousness found in this case is that, "at the time Adams perfected his invention noted experts expressed disbelief in it." A product cannot be obvious if other individuals with skill in the art do not think that it will work. The essence of obviousness says that the changes could be made by one with ordinary skill. These changes would not be obvious if experts in the art do not believe that they will be successful. One additional component to note in this case is that although the alterations were small improvements, by the final statement in section 103 that the complexity of the development process is irrelevant, this patent is still valid.

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 returns to the ruling from the A&P Tea Company case when it explains that a long felt want and commercial success "without invention will not make patentability." This creates the impression that a patent is awarded based on how inventive the idea is. Rather, the court should have ruled that it would be obvious to combine the road paving elements on the same chassis. Either way, this case confirms previous rulings that a combination of old elements is not patentable unless it accomplishes some new significant 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.

Nonobviousness vs. Invention

In the case Hotchkiss v. Greenwood, the term inventiveness was used to discuss the originality of the door knobs, eventually ruling that the improvement to the knob is, "destitute of ingenuity or invention." While the court in this case did set the tone for the 1952 law which would establish section 103 by comparing the design improvements with the skill possessed by an ordinary individual associated with the art, it caused confusion by using words like "invention" and "ingenuity."

The concept of obviousness is brought up in the Act of 1952. The case Graham v. John Deere clarifies this new development when it explains that, "the major distinction is that Congress has emphasized 'nonobviousness' as the operative test of the section, rather than the less definite 'invention' language of Hotchkiss that Congress thought had led to 'a large variety' of expressions in decisions and writings." The Graham case admits that it is difficult to define the term, "invention", in a manner that would make it easy to determine the inventiveness of a product. It is easier to examine the product in terms of its level of obviousness for those having ordinary skill in the art.

Secondary Considerations

There are a number of secondary considerations which assist judges in deciding the nonobviousness of patents. As stated in Graham v. John Deere and repeated above, "These legal inferences or subtests do focus attention on economic and motivational rather than technical issues and are, therefore, more susceptible of judicial treatment than are the highly technical facts often present in patent litigation." Additionally, "such inquiries may lend a helping hand to the judiciary which...is most ill-fitted to discharge the technological duties cast upon it by the patent legislation.

Secondary considerations that have arisen and been explained in the above cases include:

• Long felt but unsatisfied need
  • If the design was obvious, then those with ordinary skill might have already satisfied that nead.
  • Lyon v. Bausch and Lomb, A&P Tea Company v. Supermarket Corp, Colgate-Palmolive Co v. Cook Chemical Co
• Failed attempts to meet need
  • It may not an obvious creation if others with ordinary skill had tried and were unable to develop it.
  • Lyon v. Bausch and Lomb
• Commercial success
  • Commercial success is similar to "a long felt but unsatisfied need." It is evidence that the product fulfilled some desire of the public.
  • Lyon v. Bausch and Lomb, A&P Tea Company v. Supermarket Corp, Colgate-Palmolive Co v. Cook Chemical Co
• Replacing existing practice
  • It is a significant improvement over the previous product. It may not be obvious or else it would have been improved previously.
  • Lyon v. Bausch and Lomb
• Unexpected results
  • It may not be obvious if those in the art were not even sure of the outcome.
  • US v. Adams
• Disbelief by those with skill in the art
  • If those with ordinary skill do not believe that the product is possible, then there might be a nonobvious component that they do not understand.
  • US v. Adams

Note that the above considerations are not definite principles upon which to base a ruling for nonobviousness. They are merely tools to be used by the court in the decision making process.

Ordinary Skill 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