Non-Obviousness Page - Adam Mahood
One of the things that makes patent law so confusing and complex is that the subject matter at hand, technology, by definition of the word, is always changing. Thus, a field that is attempting to reign in an always changing subject matter is always changing itself. This dilemma is definitely embodied in the standard of non-obviousness and its development. Without this standard, our patent scheme and its underlying laws would be in shambles, but where are we now, somewhere better? The answer is yes and in large part due to the historical development of nonobviousness and the clarity with which legal minds throughout the years have written on the topic. In order to adequately address this issue, it is necessary to take a two pronged. First, this article will detail the historical evolution of the standard of nonobviousness by examining several landmark court cases and their underlying issues. Secondly, we will attempt to lay out a few key aspects the demarcate nonobviousness and attempt to derive some sort of objective standards for the condition
As stated above, the most important step in this analysis is to follow and trace the judicial precedents in which lies the roots and history of the standard of nonobviousness. The following sections will go through the details of several cases that have helped to lay the groundwork for what we call nonobviousness today.
Hotchkiss v. Greenwood (1850)
The first case that is relevant to this discussion is a US Supreme Court (USSC) case from 1850. It must first be mentioned that at the time of this case, the sections of the United States Code (USC) dealing with patents, Title 35, did not explicitly have a section that enumerated the requirements of nonobviousness. That language's development and a push toward codification began with this case. Thus, at this time, only the requirement of novelty existed.
The technical subject matter/invention at hand was Hotchkiss's patent for making a knob (consisting of a shank, a knob, and a dovetail connection) out of clay. Prior to this patent, both knobs made out of clay and other knobs with the same fastening device existed, thus this invention was only such inasmuch that it substituted clay for other materials in this knob design. Hitchkiss sued Greenwood for infringement and the case eventually landed in the USSC.
Justice Nelson delivered the opinion of the court and outlined a few key points to take away. It was pointed out that the only thing that was 'new' in this case was the substitution of one material for another in the same device performing the same function. He pointed out that "No one will pretend that a machine, made, in whole or in part, of materials better adapted for the purpose of which the old one is constructed...can entitle the manufacturer to a patent." This enumerates the fact that although the knob may have been made better and cheaper by the material substitution, it still performs the same function as the knob before it and is thus not patentable under the current system. Lastly, it was pointed out that unless it took more skill to make the knob out of clay than was possessed "by an ordinary mechanic acquainted with the business," there was a lack of what it means to be called an invention.
The main argument that Justice Woodbury, who wrote a dissenting opinion, presented was that if the material substitution created a product that was better and cheaper, it should be considered patentable, as it adds to the general pool of knowledge. He disregarded the need to take into account the skill of the artist and instead focused on achieving novelty.
This case lays the groundwork and foundation for the requirement of nonobviousness as the patent system evolved. Although the requirement was not codified until 1952, the Hotchkiss case was referred to as precedent for patent analysis from the obviousness perspective for many years to come. With that in mind, it is prudent to end with the main takeaways that should be gleaned from the Hotchkiss case.
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.
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.
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 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.
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.