Graham v. John Deere Karch
Graham had a patent (2627798) on shock absorbers on plow shanks
Filing date: Aug 27, 1951
Issue date: Feb 1953
Case decided Feb 1966
Fifth Circuit: VALID held the patent valid, ruling that a combination is patentable when it produces an "old result in a cheaper and otherwise more advantageous way."
Eighth Circuit: INVALID held that since there was no new result in the combination the patent was invalid.
Supreme Court: INVALID said that both the fifth and the eighth used the wrong reasons, but the eighth came to the right conclusion.
First patent case decided by the Supreme Court since the Patent Act of 1952 which added Sec. 103
Jefferson: "having a monopoly on an idea is not a natural right"
Patentability shall not be negatived by the manner in which the invention was made - sec 103
Under Sec 103
"Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy."
Primary tests of non-obviousness
1. Scope and content of prior art
2. Differences between prior art and current claims
3. Level of ordinary skill in the matter
Secondary tests of non-obviousness
1. Commercial success
2. Long existing unresolved needs
3. Failure of other attempts
"We have observed a notorious difference between the standards applied by the Patent Office and by the courts."
"He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office."
Other relevant patents
VIBRATING PLOW AND MOUNTING 2493811
Filing date: Feb 26, 1947
Issue date: Jan 1950
The Graham '811 and '798 patent devices are similar in all elements, save two:
(1) the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811; and
(2) the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank.
Graham's '798 patent application contained 12 claims. All were rejected as not distinguished from the Graham '811 patent.
Graham withdrew the original claims and substituted the two new ones which are substantially those in issue here. His contention was that wear was reduced in patent '798 between the shank and the heel or rear of the upper plate.
Petitioners say that this difference in flex, though small, effectively absorbs the tremendous forces of the shock of obstructions whereas prior art arrangements failed.
"all of the elements in the '798 patent are present in the Glencoe structure. Furthermore, even though the position of the shank and hinge plate appears reversed in Glencoe, the mechanical operation is identical. The shank there pivots about the underside of the stirrup, which in Glencoe is above the shank. In other words, the stirrup in Glencoe serves exactly the same function as the heel of the hinge plate in '798. The mere shifting of the wear point to the heel of the '798 hinge plate from the stirrup of Glencoe - itself a part of the hinge plate - presents no operative mechanical distinctions, much less nonobvious differences."