Mitros:Homework 2

Patent References

Among the citations provided for my patent (invented by Shao Shin-Chin, see Mitros:Homework 1) there are two electronic, oscillating fans.

The first patent is 2341220 (now referred to as 220). It is described as "fan oscillator with motor carried clutch control". The patent consists of a motorized fan unit that is mounted on a base that allows the fan to rotate around a vertical axis. Unlike the fan in the patent I chose for homework 1, this fan is not intended to rotate about a horizontal axis, but rather remain at a 90 degree angle to its supporting stand. When it comes to the fan's oscillation about the vertical axis, the utilizes a gear system that can be engaged/disengaged to the power system that drives the rotation of the fan blades. When disengaged the fan does not oscillate. When engaged, it rotates at a rate that corresponds to the speed at which the fan is rotating since both the fan blades and oscillation are being run off of the same motor. Therefore, the faster the fan blades are rotating, the faster the fan will oscillate.

The other is patent 2618434 (now referred to as 434). It is described as an "electric fan oscillating device". This fan is similar in structure to patent 220. However, this fan specifically addresses the problem that preexisting fans' rate of oscillation about the vertical axis was dependent upon the rate at which the fan blades were rotating because both mentions were powered by a shared motor. This fan utilizes two separate motors to spin the fan blades and oscillate the fan, therefore resulting in the same rate of oscillation for all blade speed settings.

For the sake of this assignment, there is a clear evolution as to the design of the inventions starting with patent 220. Patent 434 appears to build off of the ideas set forth in 220, and Shin-Chin's patent builds off of ideas present in 434. Therefore, I will analyze each case by first comparing patent 434 to 220, and then Shin-Chin's patent to patent 434 rather than simply comparing the Shin-Chin patent to both 434 and 220.

Analysis In Light of Hotchkiss v. Greenwood

In Hotchkiss v. Greenwood the case revolved around the issue of a patent given to a ceramic knob of particular design and installation. Specifically, it was argued that the patent was simply an adaptation of other widely manufactured knobs simply made out of other materials and as such, the item is not novel enough to be patented. The court stated that "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." In order to determine the patent's novelty the court gave a general definition of an invention's novelty declaring that if no more ingenuity and skill was necessary to construct the patented item or process in question than that which is possessed by an ordinary mechanic acquainted with the art, then the patent was void.

With this analysis in mind, in light of patent 220 it is difficult to imagine either patent 434 or Shin-Chin's patent being granted. In the case of comparing patent 434 to patent 220, the biggest distinction is patent 434's ability to oscillate about its vertical axis at a rate that is independent of the rotational velocity of the fan blades. The way this was achieved was by adding an additional motor to control the oscillation. When examining the difference between the two designs, I would imagine that an ordinary mechanic qualified in the art would be able to install a second motor to separate the gear trains that drive the fan blades and oscillation motion. Therefore, under the terms set forth in Hotchkiss I would think that a patent for 434 would not be awarded.

Moving on to comparisons between patent 434 and the Shin-Chin patent, I would also assume a patent would not be granted under the terms of Hotchkiss. Just as could be said for comparing 220 to 434, it would appear as if an ordinary mechanic in the art would be able to include the Shin-Chin patent's ability for the fan to also oscillate along a horizontal axis. Also, the Shin-Chin patent mentions that other fans built more recently than the two cited patents are only able to rotate on the horizontal axis roughly plus or minus 20 degrees. However, the additional movement afforded in the Shin-Chin patent once again appears as if it is simply the work of the mechanic increasing the functionality/range of motion of the fan. Therefore, I would argue that the Shin-Chin patent would also have been denied under the terms of Hotchkiss.

Analysis In Light of A.&P. Tea Co v. Supermarket Corp.

This case came before the Supreme Court with recent courts ruling in favor of the validity of the patent in question. The reasons for this included that the invention presented a "decidedly novel feature and constitutes a new and useful combination" as well as its "evidence of commercial success." Yet the Supreme Court decided to reverse these previous decisions. Although the court acknowledges that "The concept of invention is inherently elusive when applied to combination of old elements", it cites precedent stating that "The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable." In this case the court determines that the patent "is wanting in any unusual or surprising consequences from the unification of the elements here concerned" and decides that the patent is not valid. The court then goes on to say bothering to provide patents to such trivial "inventions" as presented in this case is missing the point of patent law. Patents are intended to be given to inventions that make distinctive contributions to scientific knowledge. Minor improvements in a previous invention's functionality and operation can hardly constitute something that should be considered equally unique and patentable.

Just as with the Hotchkiss case, I would assume patents would not have been awarded to 434 and the Shin-Chin patent due to the nature of these inventions relative to patent 220. In comparing 220 to 434 and then Shin-Chin's patent to 434, the only differences are minor improvements in functionality. In both cases neither subsequent patent can be seen as resulting in "unusual or surprising consequences from the unification of the elements concerned". Furthermore, the inclusion of extra degrees of freedom or independent rates of motion can hardly be seen as making distinctive contributions to scientific knowledge. Rather At the end of the case document, the court lists a number of cases it has heard in the past that it considers to have been trivial attempts to extend monopolies to the simplest of devices. These minor improvements in functionality appear to be in this same nature.

Analysis in Light of Lyon v. Bausch & Lomb

In Lyon v. Bausch & Lomb, the court makes its ruling in light of the recent passing of 35 USC 103 which focuses on the idea of nonobviousness. In his ruling Justice Hand goes on to expand upon the groundwork laid out in Hotchkiss v. Greenwood that an invention require more ingenuity and skill to construct than that possessed by an ordinary mechanic acquainted with the art in question. Hand notes that in this case, the most competent workers in the field had a long need for the patented invention. These same individuals had attempted to derive a similar invention but none were successful. And once the invention had been revealed, it "supplanted the existing practice and occupied substantially the entire field." As such, the invention was not "obvious to a person having ordinary skill in the art." It was these criteria that the court used to guide its verdict in this case.