Homework 2: Validity of "Combinations"

Hotchkiss v. Greenwood

Under the court ruling in Hotchkiss v. Greenwood, inventions in which the improvements could be attributed to the skill of a mechanic acquainted with the business (such as material substitutions) are not patentable, though they may render a product that is better or cheaper.

A. & P. Tea Co. v. Supermarket Corp.

Under the court ruling in A. & P. Tea Co. v. Supermarket Corp., inventions which are combinations of "known" items are considered to be patentable, provided that the combination performs a new or different function, or that the changes made in the combination as compared to prior art are significant enough as to constitute an improvement worthy of patenting.

35 Section 103 Under Lyon v. Bausch & Lomb

35 USC Section 103(a) reads, "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."

Under Lyon v. Bausch & Lomb, the court holds a more generous standard under Section 103, one that does not require more than what is stated in order to pass the test of "inventiveness." Essentially, if it can be shown that the subject matter fulfilled a need within the art not satisfied by prior art, then the subject matter passes the test, since the changes were clearly not obvious "to a person having ordinary skill in the art." (If they had been, then there wouldn't have been a need in the first place.)

1. Patent 3676638: Plasma Spray Device and Method (1972)

Summary of 1972 v. 1988: Some of the most prominent conditions which separate this earlier device from its later cousin (found in Homework 1: 1980-1990 Patent) are as follows:

• There are significantly more pieces used to assemble the 1972 device than in the 1988 device
• The 1972 device takes the shape of a hand-held "gun" when fully assembled, whereas the 1988 device is meant to be used in an automated machine
• The material powder is inserted into the gas flow at an earlier point than in the 1988 device
• Plates with helical holes are used to drive the pattern of the flow of gas through the nozzle instead of creating a vortex
• The electric arc is created directly at the end of the cathode, rather than at the end of the nozzle in the 1988 device (which has "extended arc" in the patent title)
• The plasma spray gun can only spray powdered materials, whereas the 1988 device can spray both powders and wires/thin plates
• Geometries of the nozzles and internal cavities vary dramatically between the two devices
• The velocity of the gas/material in the 1972 device is significantly lower than in the 1988 device

2. Patent 4095081: Electric Arc Metal Spraying Devices (1978)

Summary of 1978 v. 1988: Some of the most prominent conditions which separate this device from the 1988 device are as follows:

• Two wires, which provide the material for spraying, are used as the anode and cathode that form the electric arc in the 1978 device, which differs vastly from the 1988 device
• The 1978 device can use only metal wires, whereas the 1988 device can use powders, wires, or thin plates
• The wires may be fed into the gas stream after the gas exits the nozzle, or an attached outlet nozzle may be utilized in which the wires are fed into the gas stream before the gas leaves the system
• The outlet nozzle can be configured to produced various spray profiles upon exiting

Assessment Under Hotchkiss v. Greenwood

1. Under the court ruling of Hotchkiss, the 1988 device's patent would probably be considered invalid. Both devices ultimately perform the same function, despite the improvements made between the 1972 and 1988 devices, resulting in better performance. However, since the method remains essentially the same and the changes have mostly effected the device itself, the improvements made could reasonably be argued to be the result of "a skillful mechanic acquainted with the business."

2. Under the court ruling of Hotchkiss, for the same reasons that the 1972 device may have rendered the 1988 device unpatentable, and even more so because there are fewer obvious differences between the 1978 and the 1988 device, the 1988 device's patent would most likely be ruled invalid.

Assessment Under A. & P. Tea Co. v. Supermarket Corp.

1. Under the court ruling of A. & P., the 1988 device would most likely be patentable, as the differences between the two devices present significant improvements in performance and cost.

2. Under the court ruling of A. & P., the 1988 device would still probably be patentable. Although the differences between the 1978 device and the 1988 device are not as profound, there is still a significant enough improvement in performance between the two that the 1988 device would most likely be patentable.

Assessment Under 35 Section 103 Under Lyon v. Bausch & Lomb

1. Under the court ruling of Lyon and their interpretation of 35 Section 103, the 1988 device would certainly be patentable. In the 16 years between patents, the overall level of current manufacturing technology would have changed somewhat significantly, leaving a need for technology that would be more suitable to the state-of-the-art. The 1988 patent clearly steps in to fill the need through the numerous changes in its form and function. One example would be the change from being a hand-held device to one that is operated within an automated machine.

2. Under the court ruling of Lyon and their interpretation of 35 Section 103, the 1988 device would still be patentable, due in large part to the same reasons as the device would be patentable as compared to the 1978 device. There would have been a need for improved technology due to the advancements made in the field of manufacturing technology, and the improvements introduced in the 1988 device were able to address those needs.

The Effects of the Evolution of Non-obviousness

The requirement of non-obviousness and its evolution and development over the years has clearly had an effect on the patentability of the 1988 plasma spraying device as compared to its predecessors. The Hotchkiss decision, which placed a strict focus on "the skill of a mechanic" as a test for non-obviousness, ignoring other factors such as superiority in function and reduction in cost, placed a strict rule that probably would have prevented the 1988 device from being patented, as the changes are mostly to its form with the purpose of improving the functionality of the device. The A. & P. decision broadened the umbrella of non-obviousness somewhat, placing more emphasis on whether the subject matter presented a significant improvement or a change in function. Under this decision, because the 1988 device was much improved from both the 1972 and the 1978 devices, it would more than likely have been able to be patented. Lastly, in the Lyon decision, non-obviousness in a sense returned to something similar to the Hotchkiss definition, but with a more generous interpretation, requiring only that the changes not be "obvious to a person having ordinary skill in the art" and allowing things such as a demonstrated need for the improvement to suffice to meeting the requirement. Under this decision, the 1988 device would surely be patentable, due to the changes and advances in the general field of manufacturing.