Homework 5: Nonobviousness Paper
The U.S. Code sets forth a series of qualifications concerning patents, patentability, and all that these terms imply in a series of sections under Title 35. The guidelines for nonobviousness may be found under Section 103, which states that:
[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.
There are several guidelines to determine what is obvious and what is not. Primary consideration must be given to determining the prior art. This means researching the previous inventions which led to the ability to create the current one and assessing how they differ from the new creation. One must also consider the ordinary level of skill in the art; this is necessary to apply the standard outlined in 103 effectively. Once these fundamental considerations have been determined, there are other ways to further establish nonobviousness. If the invention enjoys commercial popularity, then it is likely a new invention which the public has not seen before and in which they find a useful improvement over prior art. Furthermore, if the invention satisfies a longstanding, as-yet-unmet need, then its composition is likely such that it is not evident to someone with ordinary skill in the art. In the same vein, if many others have striven to create the same device or process and have been unsuccessful, then the way in which the functionality of such an invention is achieved is enough to justify the issue of a patent. In short, here are a series of questions which can be used to determine patentability under consideration of nonobviousness. What is actually different about the invention, or, how exactly does it differ from the prior art? Is this (are these) difference(s) within the scope of prior art? Is the invention more than a simple combination of previous inventions, which would be obvious to a person with normal skill in the art? Has the invention sold well? Is there a demonstrated history of individuals attempting to create this invention, yet failing? If the answer to all of these questions is yes, then the invention is likely nonobvious.
The purpose of patents is to reward inventors who make significant contributions and advancements to science and the useful arts while at the same time ensuring that these inventions and knowledge may be effectively disseminated to the wider skilled community. In this way, inventors are provided with an incentive to create new works, and the progress of science and other useful arts is encouraged.
Nonobviousness is applied largely to mitigate the number of patents issued to trivial inventions. In the case of A. & P. Tea Co. v. Supermarket Corp., the Supreme Court proclaimed that simple combinations of old inventions are gadgets, not new inventions. Patents are meant to be granted to those who deserve them, who have contributed to the advancement of human living. The opinion of the court said as much. “The invention, to justify a patent, had to serve the ends of science - to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”2 If care is taken to grant patents only to those who deserve it, then Congress is fulfilling its constitutional obligation more nearly and under the restrictions placed on it by that document.
In order for this requirement to become part of the Code inspired by the Constitution, Congress passed the Patent Act of 1952. Yet this legislation added nothing new to the law or its application: rather, “[t]he Act describes itself as a codification of existing law, as it certainly is in the sense that the structure of the system remains unchanged.”3 Thus, the spirit of the original law as defined by the Supreme Court in earlier cases is preserved within the written code itself.
Graham v. John Deere demonstrates a delicate line between rewarding inventors and simultaneously holding them to a high standard. Technology progresses, often rapidly, and it is counterproductive to deliberate and rely on judiciary avenues to determine the obviousness of individual applications. However, if the standard is too high, then nothing will be considered an invention, since nearly all inventions are combinations of prior art. If the standard is too low, then patents become trivial and divert from their original purpose. Because of this, nonobviousness must be clearly defined to assist the patent office in its decisions; “strict observance of the requirements laid down here will result in that uniformity and definiteness which Congress called for in the 1952 Act.”4
It is important to remember the primacy of some methods of determining nonobviousness. The scope of prior art, the differences between prior art and the invention, and the ordinary skill are paramount to the obviousness of the invention. The secondary considerations listed above are just that: secondary. A “combination [that has] filled a long felt want and has enjoyed commercial success... without invention will not [merit] patentability.”5
The U.S. Constitution gives to Congress the ability “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”6 Soon after this document was written, in 1790, the Patent Act granted the power to issue patents to the Secretaries of State and War, as well as the Attorney General. In some of his post-Constitutional writings, Thomas Jefferson transitions from a staunch opponent of monopolies to an advocate of limited monopolies for inventors, artists, and writers. He ultimately viewed patents as a way to encourage inventors and ingenuity.
The concept of nonobviousness first appeared in some form in 1850, in the case Hotchkiss v. Greenwood. Called the “flash of genius” standard, this model necessitated a demonstrable inventive step in order for a combination of previously existing materials (in this case, a doorknob and latching mechanism) to be considered new. In this case, the court held that the Hotchkiss product was not an invention. The improvement takes no ingenuity or invention, but rather is an adaptation of an existing process which makes it almost entirely the same as before. Instead of inventing a new doorknob, he rather had mechanically altered an existing one.
100 years later, in A. & P. Tea Co. v. Supermarket Corp., the concept of nonobviousness was further elaborated. Although the United States had awarded patents to new combinations of old parts before, it had failed to really define what criteria should be assigned to such combinations in order to ascertain their patentability. The Court proposed the following test: combinations of old things may only be patentable when the whole is in some way greater than the sum of its parts. In the case of the counter extension and accompanying features, the Court ruled that neither lower court had discovered a new function derived as a result of the combination of other inventions. Because the patent did not contribute any new knowledge, it was invalid. The Court emphasized that Congress does not have, in its power, the ability to grant patents as freely as it wishes. The power to grant patents is qualified by restricting the award of patents only to those inventions which promotes the progress of science and the useful arts.
In 1952, Congress passed an amendment to the original Patent Act. This alteration, among other things, introduced the verbiage of nonobviousness, thus officially embedding this concept into the U.S. Code.
In 1955, the courts again visited the concept in Lyon v. Bausch & Lomb. The ruling in this case further improved on the Hotchkiss v. Greenwood decision by saying that improvements must demonstrate more ingenuity than an average mechanic with an average knowledge of the subject; in other words, the combination must be nonobvious to someone well versed in the art. However, the ruling stressed that legislatures, who had been criticized in earlier statements such as the Supermarket Corp. ruling as being too willing to grant patents, must be free to follow the fundamental rules of the law without the waters getting muddied by subsequent court decisions.
Eleven years later, in the landmark Graham v. John Deere, the Court found that the petitioners' arguments were unfounded and that there were no aspects of the patent, an improved plow mechanism, which were nonobvious. The aspects of the patent which were considered to be inventions were in fact part of the body of prior art and thus were not new. The features which the petitioners claim as new do not in fact result in an advancement of the art; thus, the design is not an invention.
In the same year, in U.S. v. Adams, the government presented 24 pieces of evidence aimed at proving the Adams battery patent was invalid due to lack of novelty and nonobviousness. These articles strove to show that the materials comprising the anode and cathode of the battery were not new and had been used in batteries before. However, the battery patent claimed novelty in the use of water as the electrolyte. The arguments presented by the government were inapplicable to the matter of the patentability of the battery. The battery was determined to be both new and nonobvious. The ruling in Anderson's Black Rock, Inc. v. Pavement Co. further emphasized the importance of the inventive step. The addition of the heater on the side of the vehicle is the main point of contention. The owner of the patent claims that prior heaters were used primarily for patchwork, whereas this heater is to be used for continuous heating of the previous strip so as to prevent cold joints. The District Court found that the new design was not an invention, citing that the chassis was merely a combination of prior art. The Court of Appeals ruled that it was, in fact, an invention. The Supreme Court reversed this ruling, citing that the patent was invalid due to the fact that it was obvious.
Finally, in KSR International Co. v. Teleflex, Inc., the court built upon the decisions made in Adams. The Adams ruling showed that just because the parts used in a combination were known in prior art is not enough to prove obviousness. Indeed, if this were enough, the bar for determining patentability would be set impossibly high. The “teaching, showing, or motivating” method of judgment, which states that an object is obvious if the prior art points to its development as a natural progression, is not in itself inconsistent with the Graham recommendations. However, when it is used as a hard-and-fast rule instead of an insight or suggestion, it in fact detracts from the purpose of patents. One claim was found to be obvious, but the rest of the claims were undecided. The case was sent back to the CAFC for further judgment.
The difficulty in determining nonobviousness derives from the fact that both its definition and the current methods of evaluation are completely arbitrary and subjective. What is a mechanic with ordinary skill in the art? When does the inventive step occur? How can one quantify a whole greater than the sum of its parts? It seems clear that the difficulty arising from nonobviousness since its introduction 60 years ago stems from its vague, imprecise definition. Perhaps a better definition which does not refer to a chimeric “mechanic with ordinary skill” would provide a better platform upon which to place the standard. It could read: “nonobviousness is a quality exhibited by a device, process, practice, digital work, or composition of matter characterized by a new method, structure, production, or intended function developed in whole or in part by utilizing an innovative design; the combination of previous inventions must demonstrate some quality not found in the previous inventions individually.”
This definition is more useful for a number of reasons. First of all, it covers several different inventive creations, from new machines to new business practices to new computer programming. It also encompasses a variety of ways in which a previous invention or set of inventions may be modified into a new, patentable product. In the Lyon case, heating the lens and coating throughout the application process was the nonobvious step. In Adams, it was not new to try a different liquid as an electrolyte, but it was new and nonobvious to use water to essentially activate a battery. In both these cases, the combination exhibits a new feature or behavior not found in its constituent parts.
The definition also screens out all the cases treated above. Hotchkiss’ doorknob was a new structure with new material, but it was not innovative. The same goes for the counter widget from the A. & P. case. Graham’s developments, though “new,” were not demonstrative of a new function not achieved by the individual parts which formed his plow; the same goes for the heater in the Anderson case. Thus, this definition fully embodies all that the Courts have ruled in regards to nonobviousness.