Exam 2 (due Thurs 5)~jnosal
1) What advantage did the respondents design have over prior art?
- It cooled the pavement being laid to help bond with the already cool laid pavement on the road, avoiding a hot joint.
- It combined prior art to utilize multiple simple design features on one chassis.
- It used a convective heating to help warm cement to be removed from an old road surface.
2) What plausible situation will allow for a combination of prior art to be patentable?
- The combination of elements results in a greater value than the sum of individual components.
- The combination of elements only digresses one generation back from the newest level of invention.
- There is a licensed agreement with the manufacturer of the prior art that allows for its inclusion in the new patent design.
3) What patent subject does this case deal with?
- Patentability of material compounds.
- Patentability of government construction technology.
- Patentability of design combinations.
2) Can you think of another patent combination that has been passed by the PTO?
Rolling chairs are a combination of both wheels and a sitting device. In the case of rolling chairs they have more advantages than reduced friction and a sitting surface. They also allow for the convenience of locating a sitting device anywhere that it is needed.
3) What was the deeper reasoning behind the Supreme Court’s decision to declare the patent invalid, beyond the fact it was a simple combination of prior art without any added benefit?
The court wanted to prevent undue monopolies from being created without prior innovation. Monopolies are necessary to support innovation but only when they are appropriately created. Providing monopolies to simple combinations also allows for average people to step around the restrictions of prior art patents and effectively create their own umbrella patent of all the products. 4) Can you think of another combination of devices that most likely did not receive a patent or that would not receive a patent for reasons discussed in this case?
A watch with a compass inside of it would be a perfect example of a device using a combination of designs that does not innovate in anyway. This device merely includes the benefits of a mini compass inside of your watch saving you the need to hold two separate objects. If the compass was somehow integrated into the workings of the clock it may become a patentable product. 5) Write a brief description of the judges reasoning for the Supreme Court’s decision.
The design of the pavement heater along with the pavement layer was obvious to someone skilled in the art because it was a simple combination of prior arts. The fundamental reason why it was so obvious, and thus not patentable, was that there were no additional benefits apart from prior art benefits.
6) How does the decision of the court affect patent law in the future?
The court has cracked down on the limitations of patent combinations. It is clear that the Court of Appeals had a different view of what was a patentable combination than what the Supreme Court desired. With this new decision it is clear to all sub courts that combinations of prior art of this simplicity are not patentable.