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 in 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 analysis approach. 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 that demarcate nonobviousness and attempt to derive some sort of objective standards for meeting 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. Nelson was, in a crude sense, attempting to lay out a procedure for examining a patent from the obviousness standpoint as technology moved forward. This procedure included first, researching and closely examining the prior art in the relevant field. Secondly, the differences between the patent at hand and the prior art should be investigated in detail. Lastly, it must be determined whether the differences between the two sources are such that they would require someone with extraordinary skill in the pertinent art to figure out at the time of the invention.
A&P Tea v. Supermarket Equipment (1950)
This is the last USSC case that dealt with the issues of nonobviousness in patents before the language was codified in 35 USC 103 in 1952. This outcome of this case builds upon the foundation laid in Hotchkiss to the end of determining what explicit language should be used when applying this criteria. This case is unique in the fact that the subject matter is very trivial in its technical details but has a large impact in terms of nonobviousness precedent.
The device/invention at hand in this case was a rectangular shelf-like device that enabled easier movement of groceries from the customer's end of a checkout counter to the attendant's. This concept was embodied in a wooden, box-like frame that sat on top of existing checkout lanes and enabled sliding the groceries from one end to the other. It must be stated here that similar devices and checkout counters themselves existed previously just not with the dimensions and sizes defined in the patent.
Justice Jackson delivered the opinion of the court, a ruling that overturned previous rulings and found the patent invalid. It is stated towards the beginning of the opinion is whether or not the courts below applied the correct criteria of invention. (Notice here invention is used instead of nonobviousness) Jackson stated that the patent at hand is merely an extension of older devices, and this extension wasn't even claimed in the patent itself. With this laid down, it was determined that the inventiveness of a product can never lie in mere change of dimensions of existing art, and that is exactly what we had here. All of the components described in the patent did indeed exist in the prior art and this device was merely a combination of said elements. From these statements, the first elements of a nonobvious requirement was born.
It was determined through the decision of the case that combination patents, which most new devices are, in order to be deemed nonobvious must
* in aggregation perform or produce a new function or operation than the component parts alone * as a whole, exceed the functionality of the sum of its parts * add to the general pool of useful knowledge, not subtract from that freely available to a skilled artist.
Lastly, Jackson pointed out that "commercial success without invention will not make patentability." Keep in mind that this was not yet codified law, but merely judicial precedent set forth from a USSC opinion in the Supermarket case.
Patent Act of 1952
Up to this point in history, the Hotchkiss and A&P cases had laid the base for nonobviousness. Primarily in the fact that the differences between the prior art and the invention at hand had to be such that they would not be discoverable to someone in the field, and that combination patents that do not perform a different function that each of its component parts, are not patentable. The 'invention' language mentioned earlier was revamped due to A&P and modified into the 'nonobviousness' language that exists today. These precedents were codified and put in place by the Patent Act of 1952.
This legislation was a modification of the sections of the US Code that dealt with patents. Specifically this bill added 35 USC 103 under the heading "Conditions for patentability; non-obvious subject matter." The language of this section of the statute was ammended to the following:
"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that 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. Patentability shall not be negatived by the manner in which the invention was made."
A few modifications to 103 have occurred since then, but this paragraph still remains as the basis for the nonobviousness standard. The cases that will be discussed below all deal with how to apply this new standard.
Lyon v. Bausch & Lomb (1955)
This case, as evident from the date, was the first major intellectual property case that arose since the passage of the Patent Act of 1952 and its subsequent language. What's unique here, however, is that the decision points lie in the analysis of an aspect not completely addressed by 103. It is this issue to which we now turn.
The patent, originally given to Lyon, and in question in this US Court of Appeals for the 2nd Circuit case, is for a process for coating optical lenses. Although somewhat trivial seeming now, it was a very state of the art issue at the time of the patent. First off, it must be realized that lenses had been coated by similar processes for years, but coating adhesiveness and robustness had been somewhat of an issue. However, Lyon's patent covers his added "step" in the process of keeping the optical surface heated while the coating is applied, ( a step that helps solve the preexisting problem) and the issue of whether this step was enough to obtain a patent under the new standards of 103 was born.
The key fact in this decision lies in the attempts of scientists to come up with a better method of coating adhesiveness for years prior to this patent. The most competent members of the field had not yet been able to achieve the level of success in Lyon and thus Lyon's method, after publicity, came to dominate the field. The patent was named valid and the first secondary consideration to 103 outlined. Namely, we now see that if an added step has eluded those skilled in the art thus far and fulfills a large unmet need, the step or addition is enough to fulfill the new nonobvious requirements.
Graham v. John Deere (1966)
This landmark USSC case from 1966 begins to hint at the fact that nonobviousness, or as it was previously referred to, inventiveness, was really an engineering question. The reason behind this lies in analysis of the two patents in contention in this case.
The first patent, the Graham patent was for the addition of essentially an obstruction avoidance mechanism for plows. This patent was an update of their own device and was a direct competitor to a similar, previously existing product the Glencoe device. Graham claimed the patentability of his invention lied in the placement ofthe shank that would prevent bowing. However, the Glencoe device already had this feature, but merely in a different arrangement. It was determined that the only difference from the prior art was the placement of one piece, whose possible locations are limited and obvious to someone in the art. This same conclusion was reached in invalidation of the second patent, the Cook device, where the differences between the prior art and the new device were placement changes that were ruled obvious at the time of invention.
This focus on detailed analysis of the patents and prior art on the part of the courts shows that to determine nonobviousness means to rely on a fundamental understanding of the underlying technology at hand. This shift from inventiveness of the device to obvious in terms of technical changes from prior art is the main legacy of this case. These engineering questions are a large portion of what will be defined as the standards for nonobviousness in a later sectino of the page.
U.S. v. Adams (1966)
This first of the final three cases dealing with nonobviousness hearkens back to the discussion of combination patents, the primary subject of the A&P case mentioned above. It is important to analyze this case first from a technical point of view. What was contained in Adams' contended patent was a so called "wet battery" that contained a Magnesium electrode, a Copper Chloride electrode, and a cavity that when filled with water activated the battery. Adam's motivation was to create a battery that could be manufactured and shipped with no liquid contained within, and also to create a battery that was operated by water thus eliminating harmful waste and toxic exhaust created during operation of the prior art.
The court in this case, admirably applies the standards in 103 that were developed in 1952. A detailed analysis of the prior art was carried out and the following findings were revealed. It was determined that the prior arts introduced by the government did indeed show that all of the elements of Adams' battery were indeed publicly known. From this, it was argued by the government that Adams' patent was just a combination and material substitution and thus invalid. However, the courts went on to relate that scientists in the field had never thought of using water as the electrolyte for a wet battery and even further, that whenever Skrivanoff attempted to carry out the material substitutions with a different electrolyte the results were disastrous and the work abandoned.
Thus, it was determined that Adams' combination was not obvious at the time for two key reasons. First, the courts said that it had been shown that there was in fact "teaching away" from Adams' methods in the field at the time which would turn even experts away from this method. Also, since the material substitutions and combination produced non-identical and unexpected results the device was indeed patentable. It is this unexpected results phraseology that was the main precedent of this case with respect to combination patents and relevant material substitutions.
Anderson's Black Rock v. Pavement Salvage (1969)
This case, like Adams, deals once again with combination patents. This section will be somewhat brief because the case and its content was very clear. The technical background is as follows. It is often necessary to heat edges of an asphalt section with a heat source such as a radiant heater before the next section is joined. With this need in mind, Pavement Salvage developed a method of affixing "a radiant-heat burner upon the side of a standard bituminous paver." This allowed the joint to be heated as the paver laid the next row.
It was quickly determined by the courts that the patent was invalid as a result of not fulfilling nonobviousness requirements. It was shown that both elements, a radiant-heat burner and a standard paver, existed in the prior art and were thus not patentable. It was determined that the relevant combination of these two devices in the fashion shown in the patent did not perform any new function in tandem than the old elements did on their own. This shows that even though a device can perform a useful function it may not meet the requirements laid down by judicial precedent and codified in 35 USC 103.
KSR vs. Teleflex
See "Alternative Tests" below.
Objective Standards for Nonobviousness
Let us wind our way back from this lengthy but necessary historical conversation to the desire state at the outset to determine an objective set of criteria that demarcates the nonbviousness requirement as codified in 35 USC 103. Through Hotchkiss, Graham, Adams and the like, the following has been established through legislative language and judicial precedent:
To determine if an invention is nonobvious
- First, one must examine in detail the scope and technical concepts of the prior art in the relevant subject matter.
- Secondly, the differences between the prior art and the invention at hand must be clearly demarcated.
- Thirdly, the level of ordinary skill in the art at the time of the said discovery must be determined.
- Lastly, if the differences between the two are such that a person with ordinary skill in the art could have, at the time of the invention, deemed the advancement claimed by the patent obvious, the item is deemed not patentable.
There are also secondary considerations that can strengthen the case for nonobviousness that have been hinted at by the courts:
- A longfelt but unsatisfied need for the advancement at hand
- Commercial success of the product under contention
- Previous failures of skilled artists in the field
- Teaching away from the path of advancement that is taken by the inventor
- Unexpected results arising from a combination of prior articles
(NB: These secondary conditions alone are not enough to guarantee nonobviousness)
Alternative Tests (TSM)
The KSR v. Teleflex case above is outlined here because at its heart lies consideration of an alternative test for nonobviousness. In this case, the District Court stated that the device was patentable because it had passed the so called TSM test. This test, an attempt by the Court of Appeals for the Federal Circuit to further codify obviousness of combination patents, stated that if there can be found some teaching, suggestion, or motivation to combine the component parts in the prior art, then the advancement is obvious.
However, it was ruled by the USSC in striking down the relevant patent as obvious, although this test does provide helpful insight into approaching the obviousness question, applying it in such a rigid manner is not an adequate way to address such concerns. The Supreme Court wanted to stress that it is often necessary and encouraged to look at the interconnectedness and relation of multiple patents and the demands of the design and consumer community that the device is striving to serve. Thus, confining oneself to a rigid definition of the works teaching, suggestion, and motivation without reading into the atmosphere and opinion surrounding the prior art is a misguided approach.
Context of 103
Now that an adequate outline of both the historical development and "objective checklist" of nonobviousness has been presented, it is important to refocus ourselves context in which Section 103 of Title 35 of the US Code exists. It must be realized that obviousness is not the only criteria that must be met in order to prove patentability. In fact, as we have shown, it is the most recent addition to the relevant section of the Code. Sections 101 and 102, outlining the other requirements, have remained largely the same since the first versions of the patent clauses were drafted. So, even though the object of a patent may pass the test of nonobviousness, it may not even be a new or useful product, thus not warranting a limited monopoly. Conversely, if a product passes the obstacles put in place by 101 or 102, it may not even come close to being nonobvious as described herein. Moving forward, all sections and their requirements must be taken into account when examining the validity of a patent.