Non-Obviousness - My Selected Patent

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References – My patent only references two other patents

- Electronic Calculating Machine - D243250 This patent is essentially a design patent for an ornamental design of a pocket calculating machine, referred to as the calculator for the rest of my discussion. In my opinion, there are four aspects of this patent and its enclosed product that make it unique that must be outlined before analyzing my patent through these document’s eyes. First off, it must be realized that the stated purpose of this device was to carry out the four basic mathematical operations of addition, subtraction, multiplication, and division. It is not stated anywhere in the patent of the possibility ability of this device to be scaled up for larger scale computational operations, such as the ones we commonly use laptops for today. Secondly, this device is of a portable manner in the sense that it is meant to be easily carried on the person or in an accessory bag. This is made easier by the clamshell-like design of the device, with its display half of the device folding over onto the keypad half. Thirdly, the design drawings of the patent show one row of digit displays on which the input and output numbers are displayed to the user. Fourthly, there are 17 buttons, presumably for the 10 different digits , the four operation signs, an equal sign and two other inputs. This small amount of buttons also goes to show its single-use design. These four things are, in my opinion, the unique aspects of this citation that must be analyzed moving forward.


- Assured-check computer-based bank credit disbursing system – 4053735 This patent is much more complex than the previous citation, in that it is not just a design patent, but it is more generally a patent for a device, both form and function. On its most basic level this patent is for a portable handheld “Check/ATM” machine. Essentially people who possessed one of these units would take it to a bank that had a “base unit” and the bank would initiate a transfer to the mobile unit into two accounts, Cash and Credit. With the portable device, the user could then go to any merchant of his or her choosing and create and print checks to pay for goods and services by deducting from either of the two accounts. To accomplish this task, this device had several unique features. First off, it too had a clamshell like design in which a hinged cover exists in order to fold over and cover the keyboard for transit. Speaking of transit, it is stated that this device should be pocket sized with the mobility of the portable calculators previously existing. This device has not one, but two single-line lighted displays in which the Balance and Transaction numbers can be displayed. The keyboard also contains 10 numeric keys, an enter key, a clear key, and a button for either ‘Cash’ or ‘Credit.’ One of this device’s main features is its integrated check printer that allows the user to pay for an item by deducting from their balance and printing a check ‘on-the-fly’. This patent document also includes two block diagrams which represent the electrical circuitry and information path of the internal computing device. A main feature of the internal computer is the inclusion of non-volatile RAM which enables the storage of the account data even if the unt’s power is turned off. These features, both of the design and functionality of the device are those on which we will base our further discussion.


Hotchkiss v. Greenwood

The main debate in the Hotchkiss case centered around whether things whose only new feature was a material change of one part or another in a publicly existing or previously patented article could be patented. In this particular case, there was not much appeal to the US Code just to logic and reason. The opinion of the court was that a patent can not be granted to things that involve just a material change. Justification was a mere substitution of material does not require someone exceptionally skilled in the art to carry out. Regardless of the possible increase in quality of the resulting product, it was not new or non-obvious. The dissenting opinion was that even if it didn’t take very much skill, if the product post-substitution was cheaper or of better quality the item was patentable.

Looking at the first patent I reference above, the calculator, my invention would most certainly be patentable. It is clear that there is no simple material change from the calculator to the primitive laptop described in my chosen patent. To me, the Hotchkiss decision puts stress upon the need for an item to require special skill above and beyond that of what a normal practitioner of the art would have for creation on order to be patentable. This device fulfills the requirement in my mind because someone with ordinary skill in operating and maintaining a pocket calculator would not have the ingenuity or know-how to add several of the distinguishing features of my patent including the larger keyboard whose functions are determined by software, an expandable ROM/RAM interface, and a larger display driven by a special driver circuit that allows for 80x25 characters.

I would say that my device is also patentable even when viewed as an extension of the check-writing machine referred to above. Again, there is no mere material change and there are a lot of features of this new device, some of which have been enumerated above, that would require someone with more than ordinary skill in the art of banking, or operating or using electronics to invent. The primary way that I believe my patent is distinguished from either of the two references but primarily that latter one is that in the patent or philosophy presented within, the inventor does not limit their device to a single purpose or application. Whereas the two references are what I will call specialized portable computers, one for four simple mathematical operations and one for banking transactions, this device is inherently limitless application wise. With the addition of the expansion RAM/ROM cartridges, the amount of possible software that can be run efficiently and easily presented on a larger display is very high.


A & P Tea v. Supermarket Corp.

The A & P decision regarding non-obviousness is crucial in the sense that it occurred right around the time which the actual patent laws were changing. This particular case may have in fact directly impacted the future language of the United States Code at play with patents. The main issue at play in this case was the non-obviousness of combination patents – patents whose devices are made up in whole or in part of previously existing parts or pieces. There were several main points made in the decision. In the opinion of the court, it was stated that an invention can’t be considered as such if it is merely an extension or change in dimensions of an existing item or items. This shows the courts desire to refine the requirements of combination patents. One can not simply combine two existing items, change their dimensions and put them side by side and call them a new item. With regards to validity of combinations, the key in my eyes is “only when the whole in some way exceeds the sum of its parts is the accumulation patentable.” The invention must serve the end of furthering the amount of knowledge in the field of science and its associated knowledge pool. Lastly mentions the genius test – a master in the field must recognize it as an advance.

Let’s now look at this case and apply it to my patent with regards to the first referenced patent. It is clear that, even nowadays, most or all electronic devices are nothing but combinations of existing raw materials and simple electronic components (resistors, capacitors, transistors). However, if a device is presented that uses a combination of these components in a new and unique manner and uses them in a way that the end function is totally different than a previous device, this new electronic device is patentable. This is exactly what we have in this case. In large part, both the portable calculator and the portable computer at hand were at a low level, combinations of plastic, resistors, capacitors, transistors, and electrical wiring. However, my laptop device puts these things together in a totally new combination than what is presented in the calculator. It appears that the calculator platform described is a portable electronic device whose sole purpose is to perform the four basic mathematical operations. Although the laptop appears to be of a similar composition, it has a stated goal and functionality of being able to host and run a variety of software programs thus making it a scalable, portable, and versatile computing device. In my opinion these points made above, and the technical details within the patent lead me to believe that an expert in electronics and computing architecture of the time would believe that a portable versatile computing device would be an advance and thus patentable over the calculator in the eyes of A & P precedent.

Secondly, let’s look at its patentability with regards to A & P precedent and the portable check printer. Again, the Supermarket decision stressed the importance that a new device cannot be an extension in dimension of an old device. I will bring two aspects of my patent which could be considered merely extensions of the portable check printer device. First off, I mentioned at the outset that my ‘laptop’ is unique in the sense it has a much larger keyboard than any of its predecessors. This expanded keyboard not only included the English alphabet, but also 4-directional arrow keys, the 10 digit keys, and other function keys. Although they have new designs printed on top of them, these new keys are merely extensions of the keyboard concept from the portable check printer. Another possible ‘extension’ argument could be made for the larger display screen. The portable bank account device had two one-line displays on which numbers could be presented to the user in a clean format. My device also has a screen for presenting information to the user, but instead of two lines, it has a capability of 80 columns in 25 lines, thus allowing for a total of 2000 possible characters displayed. Again, this ‘LCD display’ concept was not new, merely just a larger version of the display presented in the banking patent. It is my belief that through the eyes of the A&P precedent, there are certain claims of my laptop patent which may have been invalidated by invoking the extension argument brought up during the checkout counter conveyor device debate.


Lyon v. Bausch and Lomb

Although I was somewhat confused by some of the language in the Lyon case, there were a few main takeaways with regards to non-obviousness that I had. First off it became clear to me that the standards of ‘public use’ are not so clear. I realized that even if someone had been working on the same invention previously but it could be proven they abandoned the research, the art is still patentable. Also, the Lyon decision again stressed that if you are building upon an existing article, your added step must require useful insight and expertise beyond that of a skilled practitioner of the field. Lastly, my main takeaway was that of need satisfaction. If experts say that there had been a long standing need for a device of this kind, then it is clear that the subsequent discovery was not obvious.

Let’s one last time look at my device’s patentability through the eyes of Lyon as well as the portable calculator patent. I primarily want to touch on the ‘need’ aspect of non-obviousness that was mentioned towards the end of the last class meeting. The calculator that I have referenced had some very serious limitations. One is something that I have mentioned before in that it does not allow the expansion of the CPU/memory which it would need in order to support more advanced computing applications. Secondly, it does not have a large enough display to make it feasible to present any large amount of information to the user at once. Lastly, the keyboard was limited to seventeen keys in the calculator embodiment. This was presumably enough to adequately carry out the necessary functionality of four-operation calculations, but not enough to allow use of the device for multiple purposes. It is for these reasons of fulfilled need that I believe my device would be patentable, especially through the eyes of the Lyon decision, previous precedents, and 35 USC 103.

As a final analysis, it is necessary to briefly analyze the patentability with both the automatic check printing device and Lyon precedent in mind. All of the limitations that I mentioned with regards to the portable calculator still hold true here: the small keyboard, the limited display, and the set amount of computing power and memory. In tune with the above discussion, all of these needs give me reason to believe that the patent for my device is legitimate even though the portable banking check printer did exist. I want to end with a larger, more macroscopic statement of need which I believe my device fills, a characteristic that in my eyes affirms its patentability and non-obviousness especially with regards to prior art. Through the reference patents that I have presented, as well as other portable single-use electronic device patents that existed around the time of the invention of my device, it becomes clear that portable electronic devices to enable mobile computing was something that was desirable. However, as we have shown, all that existed were smaller devices that were capable of accomplishing one task. Thus, the overarching need for a multipurpose, expandable, versatile portable computing device existed at the time of my patent. Thus, since the need existed and my patent was for what appears to be the first device of its kind, I truly believe that it is patentable even with the two references patents and the decisions in Hotchkiss, A&P Tea, and most recently Lyon.