Homework 5 (due Monday 28)~jnosal

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Non-obviousness Handbook

Primary Components

• Should not be obvious improvement or design to skilled laborer at that time.

• Combination of prior art that provides new capabilities and design features.

Secondary Components

• Must contribute to society, evidence by immediate public use and desire.

• Must not hinder further innovation.


• Your designs patentability is not limited or affected by prior unsuccessful inventions.

• Replacing material without adjusting physical design is not patentable (limits further innovation in that field using selected material).

• Claims must be concise and include the bare facts or the device will not be patentable since it will limit future innovation.


The purpose of a patent is to further society by rewarding the individuals who bring valuable ideas to the table. These ideas can be further built upon by the public to maximize progress without limiting innovation. Patents that grant monopolies to obvious inventions only hinder the progress of innovation which conflicts with the fundamental purpose behind the formation of the patent office.

Policy Considerations:

From the beginning of patent history it was never intended that novelty was the only factor that deemed a product patentable. Jefferson created the patent system to reward worthy inventions with a monopoly for a specific period. This reward would not be advantageous if it hindered future innovations. Hotchkiss v. Greenwood was the first policy question regarding material substitution into an existing design.

Secondary considerations the judges covered where, wide public use and great price reduction in production. Both of these show that it is a publicly advantageous invention because the public had a demand for it, and it delivered a service at a much lower cost. But this did not negate the primary considerations by the judges. According to the judges, if the primary new feature that allowed for the patent was the change in materials, this did not necessarily limit the patent to this one specific product and design. If the material had been patentable, it would have restricted the production of the design by outside innovators and created a large monopoly over a market that deals in small quantities with many custom designs. Based off this analysis the court agreed that patentability of a material as the primary feature of a new invention is not possible while still focusing on the goals of the patent system.

A second case that has brought up policy issues with the patent office regarding non-obviousness was A&P Tea v. Supermarket Equipment. This case took place two years before section 103 was adopted into the code. Many courts were still trying to find an accurate way of determining what sets apart a patentable product outside of pure novelty. In this case the lower district court determined the invention was novel and patentable based off a simple design change. There conclusion did not change even after they learned that the entire assembly consisted of prior art. This conflicted with the decision of the Supreme Court who ruled the product not patentable. According to the Supreme Court the design combined many forms of prior art in manors which were obvious to any skilled laborer. This simple combination did not provided any new or useful incites for future inventors and thus defeats the purpose of the patent system.

Two years following the A&P case the 103 section was born. Its structure tried to embody the two major concepts of patenting, that no patent should be given to any product that limits the innovation in that or any other field effected, and that no patent should be given to any product that does not advance the public knowledge in a useful manor. These limitations are put in place to prevent the stagnation of innovation as well as ensuring that only the inventions bettering society are rewarded.

Since section 103 was created in 1952, it has been much easier for courts to follow similar evaluation plans from one case to the next. If the goals of the patent system are up held by following the rules of non-obviousness each case will be resolved the same way without any room for error. Complications only arise when the lower courts do not keep the goals of the patent system in mind during their decisions, and the general legal standard is interfered with.  

Historical Development:

The non-obviousness of an invention has been a debatable topic ever since patentability of an idea was made possible by Thomas Jefferson. As technology changes, restrictions and guidelines on what is and is not patentable must also change. There has always been a fine line between a healthy reward system for those inventions that are useful to society and require innovation, and over bearing monopolies that hinder technological progress. Cases involving the issue of non-obviousness make their way to the Supreme Court or Court of Appeals roughly once every twenty to thirty years, and they help document the interpretations and changes implemented into the code of non-obviousness in 35 U.S.C. 103.

The first case that non-obviousness played a role in, and that many other cases reference, is Hotchkiss v. Greenwood in 1850. It dealt with the patentability of an invention that solely relied on the replacement of one material with another, without actually developing the design in any geometric manner. Up until this point non-obviousness had not been developed as a way of determining if something was patentable. In this case the judges felt that there was more to an invention, past the point of a new product, that separated ideas as patentable or not. The second case discussed that brings up a new issue regarding patentability is A&P Tea v. Supermarket Equipment 1950. The case resolved the fact that the new cashier counter was not patentable due to obviousness in its combination of prior art. It was noted however, that most inventions involve almost entirely prior art. In order to determine patentability, it is necessary to analyze the product on its social advantages and the prior public demand as well as whether or not the device is helpful and not just an obvious improvement or small detail. The third case discussed, Lyon v. Bausch & Lomb 1955, took place after 35 U.S.C 103 was changed to state that an invention was obvious if it could be conceived by an average skilled laborer with some knowledge in said field of work. The judges declared the heat treated lenses to be a patentable product because they dominated the market showing that they had been desired for a long time. They also had been the focus of many experienced researchers of the time who had failed to discover the treatment. This second point is evidence that no skilled laborer at the time, could see this technique as an obvious solution. These two facts where ruled by the judges to fully emphasize the non-obviousness of the invention.

The fourth case, Graham v. John Deer 1966, also emphasizes the skilled laborer clause in section 103. The judges ruled the product as un-patentable because it was obvious to a skilled laborer experienced in the industry. They also emphasized the idea Jefferson had that no idea once shared is your own. You cannot patent an idea because it deserves to be shared in the public realm in order to better mankind.

The fifth case discussed was U.S. v. Adams 1966. An electrical battery that went against the intuitions from prior experimental designs was developed. Since the concept was previously understood to be impossible the judges declared the new design as non-obvious. They also declared that negative results of prior art does not infringe the patentability of a new product.

The final case discussed was Anderson Blackrock v. Pavement Salvage. The idea that 2+2=4 is not patentable, became a major rule to judge the non-obviousness of combinations of prior art. According to the judges any new product that consists entirely of prior art must function or provide a new use that is more valuable than only the sum of all the previous products. If this is the case then the product is deemed patentable under obviousness standards regarding the influences of prior art.  

Non-obviousness Standard:

The non-obviousness standard should fundamentally focus on bettering the patent system, which in turn benefits all of society. With this goal in mind it is easy to set up some guide lines. Do not hinder someone else’s innovation, and share your best ideas with everyone. I believe that the best standard for non-obviousness is the one in place. A non-obvious invention should not be clear to a skilled laborer experienced in the specified field. If it is clear to them, the invention has not presented a new concept that is worth the reward of a monopoly. The skilled laborer with experience should also cover combinations of prior art. Since this laborer has experience in the prior art it should be clear to him/her that a combination of products into one bulk item would be advantages when doing an assembly line type job. In response to the argument that a combination may have not been previously made, it is most likely because the combination has not needed too. If combining prior art only results in a combination of their results (2+2=4) there is no significant benefit to the public and thus no monopoly reward deserved.

There are so many different cases dealing with different issues on the subject of non-obviousness and its effect on patentability, it is difficult to create one set guide line for decisions. The current standard put in place by section 103 captures the limitations needed as best as a single rigid code can, but it is important, when applying these limitations, that the ultimate goal of the patent function is the focus of every courts decision.