Hw4 (Fernando Rodriguez)

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Historical Development

The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.

Hotchkiss v. Greenwood (1850)

Prior to Hotchkiss v. Greenwood an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of nonobviousness.

...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.
The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.
But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.
Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.
But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.
The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.
So to sumarize it all then the inventiness cannot be obtained thorugh the mere swapping of one material for another, without modifiying the purpose of the object, 

for example a chair made out of wood and a chair made out of metal.

A&P Tea v. Supermarket Equipment (1950)

This case dealt with discussing the validity of a patent for a cashiers drawer, where the arrangement made it easier for the cashier to grab the merchandise. The court used it to exemplify how they did not want any more patents that were stupid. The Supreme Court used it to decide and instruct on what classifies as patentable manner.

The extension of the drawer then is not enough of change or improvement upon the previous art to warrant the protection a patent would warrant them.
  • Furhtermore the extension of the drawer was not at any point being shown as a claim as the patent
While it pre-dates the language of section 103, A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) discussed some of the more difficult issues related to the level of invention.
  • First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
  • Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
  • Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

Another important that it differentiates when a combination is allowed to obtain a patent and when its not (due to being an aggregation) mostly because it lacks "inventiveness". It also establishes that in order for a combination to warrant a patent, the combination of the elements must produce a new purpose than that which was previously made An from then on much effort is made to establish what this new term means.

35 USC 103 (1952)

This section of the code was adopted in 1952 and prohibits a patent in a case where

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.

Lyon v. Bausch & Lomb (1955)

In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Learned Hand, in his brilliance, expounded on the new standard thusly:

Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4
  • This case dealt with the process of coating optical lenses
  • There was a precedent of a similar process (of heating) however he abandoned this process as he did not thing it brought about any benefits
    • The defendant then however perfected it and made it become an industry standard.

It serves to relax the previous rulings of Hotchkiss. This then becomes a new standard defining that nonobviousnes means that the improvement should not be obvious to a worker on a field of average skill.

Graham v. John Deere (1966)

This case deals with the non obviousness of a system to help plows absove the impact of hitting rocks. It was discovered that the only difference between the mechanism proposed and the prior art was in the way in which a clamp was attached. The combination of these elements and the small changes to the prior art did not qualify as it was certainly obvious to the average worker at the time.

In Graham v. John Deere, 383 U.S. 1 (1966) indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine non obviousness include
  • scope and content of the prior art;
  • differences between the prior art and the claims at issue;
  • level of ordinary skill in the pertinent art; and,
  • secondary considerations, including:
    • commercial success of the invention;
    • long-felt but unsolved needs;
    • failure of others to find a solution, etc.

Also important to note that US 103 does not discriminate on the way on which the mechanism was conceived.

U.S. v. Adams (1966)

Patent discussing the issue of the government infringing on a patent for a wet battery. The wet battery used a completely different set electrodes. The prior art had nothing similar to it, and when government officials looked at them, they decided that there was nothing to win from it and disregarded it, only to return to if later founding useful applications. This exemplifies the requirement of non obviousness that the combination and improvement should not be apparent to average-skill workers.

  • 1966: US v. Adams, 383 U.S. 39 (1966) All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

Anderson's Black Rock v. Pavement Salvage (1969)

Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969) by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

Suggestion to Combine

In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

Objective Tests

Two important considerations were the focus of Hybritech v. Monoclonal Antiboties, 802 F.2d 1375.

  • A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
  • The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they must be considered by the court.
  • This case also considers the concept of enablement which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

The Inventive Step

One of the dangers that proposed by the nonobvious consideration introduces then it athat of making the assumption that in order for something to qualify as pattentable it must have come from some sort of flash of brilliance or from years of work.
It is important to show that a mechanism is patentable regardless of the method thorugh which invented, this step in the process could be anything and not necessarily be dependent on the intelligence of the creator or a flash o brilliance.

Relationship with Novelty

A patent always requires that there is novelty involved in the development of the artifact to be patented. However novelty does not guarantee that the requirement of non-obviousness will be fulfilled. in A & P as well as in Hotchkiss it is a truth that the objects presented where novel in the fact that they wehre different from the prior act even in a small degree, however it is noted in these cases that they do not satisfy the non-obvious requirement. Basically:
Novelty is necessary, but not the defining factor in obtaining a patent.

Novelty is addressed in 102, and non-obviousness in 103. They are 2 different requirements than need to be fulfilled to warrant the protection obtained from a patent.

Nonobviousness vs. Invention

Non-obviousness and Invention can be considered to a certain degree to signify a similar. Inventiveness was the term used to specify that the object of the pattent should be different from those made previously in a distinct manner, not a simple swap of materials for example what happened in Hotchkiss. After 1952 however this term is changed into non-obviousness as the term inventiveness is deemed to be confusing and the court was seeking to clarify the meaning of this requirement. They also seeked to clarify the requirements necessary to be non-obvious stating that it should not be foun din previous art, and the improvement should be that that which requires that at the given time it was not obvious to a person of average skill in the field.

Secondary Considerations

This has to deal with how sometimes an invention can be shown to be nonobvious and patentable due to the application and impact that it has on the filed. A perfect example of this is shown in Adams as well as Lyon, where the time and application of their inventions that showed that they were in fact fullfilling the non-obviousness requirement.

Ordinary Skill in the Art

Reiner v. I. Leon Co. (full text)

Reiner v. I. Leon Co.

South Corp. v. US (full text)

South Corp. v. US


All the information previously shown serves to provide a complete picture of the evolution as well as the meaning of the non-obviousness requirment outlined in US 103.

  • Starting with Hotchkiss we are introduced to the possibility of something being novel and yet still no awarded patent status due to the substitution not requiring much skill and to a certain degree being obvious to people in the trade.
  • A&P furhter expands unto the considerations for patents requirning that if a combination of previously known objects/process is used then the combination should produce something new and diferent should be obtained from it.
  • US 103 1952 introduces the term non-obviousness requirement stating that the patent should have not been obvious at the time to a person in the field with ordinary skill, furthermore it states that there is no consideration for how the invention was attained, ie divine inspiration or flash of brilliance do not have any role to play in the decision
  • Lyon's serve as an example of how the new law should be applied, furthermore it serves to show the perfect ideal of non-obviousness by demonstrating that even some of the more skilled workers on the field where not capable of devicing the object of the patent. Furthermore it serves to present how the patent can be further expanded as it shows that it became the ruling process in the field, this is established as a secondary consideration.
  • In Graham and John Deere there is a move away from trying to establish inventiveness in US103 and further emphasis is put on the previously discussed non-obviousness test.
  • Adams showed that there are other considerations to be made when ruling on cases of non-obviousness as the patent in question made a small change that had an important impact