Non-Obviousness (John Gallagher)
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard in patent law. The origin of this standard is found in the Constitution, which give Congress to grant 'exclusive rights' i.e. a patent, to a person for his invention. A question soon arose about what counted as an invention, and whether it could be a trivial improvement, or whether it had to be fairly substantial. The courts, beginning mainly with the decision in Hotchkiss v. Greenwood, began to develop a testable standard for patentability, which claimed that an innovation was not an invention if it could have been developed by an ordinary mechanic skilled in the particular field. Congress attempted to codify this standard in 1952, and they introduced the idea that a development must be 'non-obvious' in order to qualify for a patent. This has remained the law since, but there has been much work done by the court in order to determine what qualifies as obvious.
Hotchkiss v. Greenwood (1850)
Prior to Hotchkiss v. Greenwood an invention only had to be novel. In this 1850 case, the U.S. Supreme Court deemed a patent on a clay doornob invalid, because it did not qualify as an invention. 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 court ruled that
- ...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.
Here the Supreme Court concedes that using superior materials to create a better or cheaper doornob was an improvement, and that it may well have taken skill and knowledge. However, they decided it did not qualify as an invention because it lacked the ingenuity that the word implies. Farther in its opinion, the court claims that
- unless more ingenuity and skill...were required...than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor.
This then becomes the standard for measuring inventiveness: if the article in question could have been produced by an ordinary artisan or mechanic whose skill lay in that field, then the article could not be an invention. This remains the standard until the change in 1952 of the section of U.S. Code dealing with patent law.
A&P Tea v. Supermarket Equipment (1950)
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.
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.
In the law, Congress also claims that they did not wish to set a new standard for inventiveness. They intended that all of the earlier standards and measures should apply. However, they introduced the language of 'obviousness,' which necessarily becomes the new standard, and is not quite the same as the standards used in previous court cases. From this point forward, an invention must be non-obvious in order to qualify for a patent.
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
Graham v. John Deere (1966)
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 nonobviousness 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.
U.S. v. Adams (1966)
- 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 known 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.
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
Relationship with Novelty
Novelty and Non-obviousness are separate requirements for patentability, and must be evaluated separately. The novelty requirement, dealt with under section 102, is meant to determine whether an article has already been invented, and has detailed rules used to make this determination. Non-obviousness, on the other hand, is concerned with whether an article constitutes a significant enough advancement from the prior art to be considered an invention. In other words, novelty means that the exact invention does not already exist, whereas non-obviousness means that the invention is different enough from prior inventions.
Nonobviousness vs. Invention
Considerations in Determining Patentability
After the change of patent law in the U.S. Code in 1952, the standard of an invention became whether it was non-obvious to a person having ordinary skill in the pertinent art. In Graham v. John Deere, the court laid out a method for determining whether a claim met this standard of non-obviousness.
- First, the scope of the prior art is to be evaluated. This involves examining prior patents, examining published writings and consulting experts in the field to determine what methods and are used in industry.
- Second, the claims at issue are to be ascertained. This simply requires that the claims in the patent should be examined and understood. This is simple conceptually, but there may be difficult in determining exactly what claims are made and what there scope is.
- Thirdly, the level of ordinary skill in the art is to be determined.
Having decided these issues, obviousness or non-obviousness can be determined.
Along with the primary considerations, there are several other considerations which may help indicate that an invention is non-obvious:
- A long felt unmet need for the invention: If people have been looking for the solution to a problem, and have for a long time been unable to find one, it suggests that the invention which provides a solution was not obvious. If it were, someone would already have invented it.
- Commercial success Commercial success may indicate non-obviousness; the fact that one person was able to create a much-desired product which other people were unable to suggests that his product or in method was not obvious to those other people.
- Teaching, Suggesting, or Motivation (TSM) Test
The courts have deviated from this pattern, sometimes placing more emphasis on what Graham v. John Deere claims should be secondary. However, recently, in 2007, the supreme court reaffirmed the pattern laid out in Graham v. John Deere in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), insisting that the secondary considerations not be weighed more that the determination of the ordinary skill in the art.