Nonobviousness-Robins (Homework 4)

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Historical Development

The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.

Hotchkiss v. Greenwood (1850)

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.

It can be seen in this pronouncement of the court opinion by Justice Nelson, that the original requirement of novelty is not satisfactory, as the knob designed by Hotchkiss is a new product. Although the term "nonobviousness" will not be developed for some time, the court's decision hinges on the fact that the mere substitution of better suited materials is too obvious a development to warrant a patent. The fundamental premise of nonobviousness is presented a few paragraphs later, as Justice Nelson states,

"....unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingeunity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor."

Thus, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field.

Summary and Items of note

There are several additional items of note in this case, that further its meaning and impact. This Case appeared in front of the Supreme Court in 1850, but it marks essentially the first addition to the qualifications of patents. The Supreme Court is not allowed to enact new laws, so the new criteria for this descision had to be based in existing constitutional law. Very interesting to note is that the majority opinion does not even quote the current law inside of the constitution. Powers of th federal government are only quoted in the dissenting opinion. This is not to say the judges did not believe they were interpreting correctly, however taking the large step to add an entire criteria to the law should not be done lightly.

This decision had far reaching consequences for the future of patents and is cited numerous times in decisions made since it occurred. It was cited INSTEAD of the US code in these incidences. establishing a precedent for non-obviousness.

A completely seperate but interesting fact is that this so often cited decision, which became a basis for US patent law, was not unanimous. The patent was declared invalid 4-1.

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. In particular, this case dealt with three significant issues related to the process of determining patentability:

  • First, that the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.

The importance of a "long felt but unsatisfied need" in the determination of nonobviousness is that it is difficult to claim that an invention is obvious if there has been a demand for a certain product and no one has been able to fulfill that need. However, it is important to note that there are two requirements that must be met here. There must be a need for the product and the need must have existed for a long time. If the need is relatively new, then it is difficult to claim that a person with ordinary skill in the field would have not developed such a design had he been aware of demand for such a device. On the other hand, if the market related to a certain field has provided no sign that there is a need for such an improvement, then it can be argued that the design would have been obvious had anyone expressed interest in the proposed device.

  • Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.

In Graham v. John Deere, the history of the patent process is discussed, particularly Thomas Jefferson's outlook on the purpose of providing a patent. Jefferson made it clear that patents were only to be granted for inventions that furthered human knowledge and were new and useful. The granting of patents for small details, obvious improvements, or frivolous devices was neither worthwhile nor helpful. In A&P v. Supermarket Corp., Jefferson's sentiment is echoed, except the focus of the court is narrowed further to the important frontier of science and engineering. As Justice Douglas states, "the purpose is to promote the Progress of Science and Useful Arts," and the two disciplines most associated with progress at that time (and still currently) are science and engineering. Even later, the court states, "patents serve a higher end-the advancement of science," which make this point very clear.

  • Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

The court's outlook on the evaluation of patents in regard to the combination of prior elements is best summarized in the following explanation. "The mere aggregation of a number of old parts or elements which, in the aggregation, peform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention....only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

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.

35 USC 103 was, put very simply, a codeification of the Hotchkiss v. Greenwood decision in 1850. Non-obviousness had been cited in numerous cases between 1850 and 103's passage in 1952. It is very important to note that because of Hotchkiss, this has essentially been a law since 1952. This fact draws attention to arguments involving the Supreme Court overstepping their bounds as "interpreters" of the law.

After the passage of Section 103, the Supreme court began citing it, as opposed to the Hotchkiss decision, reverting to this more grounded approach.

The statement made by creating this law does not undermine the importance of precedence in the court. It simply means that the Congress recognized that there was a necessary codeification of thier decision and made it happen.

Lyon v. Bausch & Lomb (1955)

Summary of case

The patent was filed November 17, 1942 Lyon claims bausch and lomb infringed upon his patent for a heated lens coating. Bausch and Lomb do not deny infringment, they question whether Lyon's patent was already known. They say "suitable coatings", a term used by Lyons in his application, is too vague a description.

Lyon Patent: Throughout the specifications the "coating" to be vaporized is described only as a "suitable coating * * such as metallic fluoride, metallic sulphide, oxide or the like" (page 1, col. 2, lines 26-28), or "mixtures" of these (page 2, col. 1, lines 26-28). The first five claims speak of "a stable, water insoluble, evaporated inorganic salt," and of the last two claims in suit number eight is for a "metallic fluoride" and number nine for "magnesium fluoride."

Cartwright and Turner took out 3 patents near to Lyon's. They involve coating an optical surface with a film of inorganic salt. 1.No. 2,207,656 depositing metallicflourides upon a lens by vaporizing it in a vacuum. 2. No. 2,281,474 superimposing 2 coatings which presupposes the vaporization of inorganic substances. 3. No. 2,281,475 process (and for its product) of coating a lens with similar substances by vaporizing them in a vacuum and thereafter "baking".

Lyons first step of cleaning the lense is now just a generally accepted method, but Lyons second step is now the way to secure the optimum bond of the coating to the glass.

Cartwright had practiced hardening the glass in a vacuum by heating it, but he had abandoned the invention, and due to his testomony was still unsure what the best way to do it was. It was considered an abandoned experiment and he was not considered the prior inventor. Therefore, in the non-obviousness sector, Learned Hand determined the decision.

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

Therefore, the question of whether the invention could be work of any skilled mechanic, was concluded by the Court to be no. People had been searching for a better way to do this and never found it before Lyon.

This would only be eligible after a law which went into effect january 1, 1953. It was stated that before this date, the patent probably would have been invalid, though the judges may have simply quoted Hotchkiss in this case. However, the rigid requirements in S103 actually helped Lyons avoid obviousness and a verdict which would have relied upon the courts interpretation.

There was also a question about whether he had accepted payment by bundgeting money from the navy to experimental endeavors, however this was not proved and the court therefore would not rule on this point.

Graham v. John Deere (1966)

Summary of case

This case: patent, No. 2,627,798

The infringement was claimed on a shock absorber that prevents damage to plows in rocky soil. 1955 fifth circuit court ruled patent valid because "old result in a cheaper and otherwise more advantageous way"

8th Circuit Court ruled there was no new result out of the combination and patent is invalid.

No. 37, Calmar, Inc. v. Cook Chemical Co., and No. 43, Colgate-Palmolive Co. v. Cook Chemical Co., also on certiorari to the same court.

Ruling:Patent fails non-obviousness from patent act of 1952. Also lower courts used "incorrect test" Also No. 37 and No. 43 were declared invalid under the same logic.

First patent case since A & P Tea Co. v Supermarket, since which congress made clear the nonbviousness clause originally ruled in Hotchkiss v Greenwood.

Patent Law has evolved since Jefferson was the first "administrator" of patents. It was initially difficult to put into law exactly what was patentable. Section 103 existed through Hotchkiss for 100 years before becoming law.

Determining the "state of the art" also became a necessary step in hearing patent law cases. This would allow justices to accurately determine whether a patent was non-obvious.

There have been different standards applied to patentability by the patent office and the courts. The need for this to be expressly communicated was now apparant.

inventions using the same mechanical components were already in existance. Glencoe device.

Graham also had a similar clamp device. He got one patent which allowed for a shakeing or wobbling of the plow, then he applied for a new patent, one that allows the plow to flex, but this was held invalid. He did not emphasize to the court the advantages of this design.

However, Grahams patent simply inverted 2 of the mechanisms in Glencoes patent. This increased the amount of flex, but was determined to be obvious by anyone in the art with ordinary skill.

Overview of Implications

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.

Adams invented a battery which used submerged cathodes and anodes in water. This battery had several advantages but they were not immeadiately seen and the invention was dismissed. Later during the war, it was used by the government in military vehicles. After Adams became aware of this use, he sued the government.

Government claimed that the battery was not new and was obvious. However, the Supreme Court examined the prior art and determined that the improvements were novel and that they were nonobvious. Ruled for Adams.

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.

This case also highlighted the connection between novelty and nonobviousness. Combinations of previous inventions blur the distinction between the two and arguments and conclusions can be used to prove both.

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.

Objective Tests

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

The Inventive Step is another way to tern nonobviousness. The key aspect is whether the invention is not a natural conclusion to a person having ordinary skill in the art. The court determines whether this is the case by applying the TSM test. They must establish what they believe is the state of the prior art and what ordinary skill level is. There are also factors that can be considered in the determination of non-obviousness, but cannot prove it explicitly. These are discussed later.

Relationship with Novelty

There are obvious relationships between nonobviousness and novelty, but non is more obvious and prevalent than the lcombination of earlier parts for a new invention. This is especially evident in Anderson's Black Rock v. Pavement Co. which featured a heater (previously invented) attached to a street paver (previously invented). This machine created better binding for the strips of asphalt. The patent must be new and non-obvious, however in this case, they are closely related. The question about whether the invention is new means that it has improved upon the previous version of the invention. This may be true, however both of the individual parts had been invented and they were still expressly performing the task of their invention. They had not been altered. So, the very argument for novelty brings up the argument for nonobviousness. If these 2 machines combined together and were proven novel, wouldn't it then be obvious to anyone in the field to use the machines in the way they were intended? There then lacks an element of inventiveness and ingenuity.

Secondary Considerations

Sceondary Considerations are aspects of the patent which can help prove its non-obviousness, but cannot explicitly prove it. These factors include commercial success, long-felt but unsolved needs, and the failure of others. These have been addressed as significant secondary considerations in cases such as Graham v. John Deere and were mentioned in earlier cases as well. These secondary considerations can change depending on the case.

Ordinary Skill in the Art

Reiner v. I. Leon Co. (full text)

Reiner v. I. Leon Co.

South Corp. v. US (full text)

South Corp. v. US