Nonobviousness: LMiller's Page
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 show “originality and usefulness.” This case basically established the notion that there had to me more to it, some sort of threshold for “inventiveness,” which ultimately became the idea of nonobviousness.
The invention in question was a clay knob with a metal shank. The shape of the entire knob setup was not new, and neither were knobs made out of potter’s clay. The novelty of the invention consisted in the substitution of the clay material of the knob in the place of one made of metal or wood, allowing the shank to still be made of metal. As a side note, the case could become a different issue entirely if clay had NOT been used in knobs before. If this were the case, it could be urged that an “old contrivance” of a knob using a new composition of matter, resulting in a new and useful article, was the proper subject of a patent.
The novelty of the invention consisted 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.
As mentioned previously, the knob is not new, nor the knob setup including the metallic shank and spindle and the dovetail form of the cavity in the knob. The means by which the metallic shank is securely fastened is also not new. 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.
It could be argued that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced that is better and cheaper than the metallic or wood knob. However, this does not result from any new mechanical device or contrivance, but from the fact that the clay material of the knob happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, which is NOT new, over that previously employed in making the knob.
Using a different material can never be the subject of a patent. If a machine were made of materials better than the materials of which the old one was constructed, even if the new materials made the machined better and cheaper, that would not entitle the manufacturer to a patent. The difference is “destitute of ingenuity or invention.” While some judgment and skill may be required in the selection and adaptation of the materials for the purposes intended, this improvement is “the work of a skillful mechanic, not that of the inventor.”
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, such as:
- whether the combination of old elements could constitute an invention,
- if the fact that a device meets a “long felt but unsatisfied need” could meet a standard of nonobviousness, and
- if patent protection should be reserved for devices at the frontier of science and engineering and not “wasted” on mundane articles such as plows.
The invention at issue in this case was a cashier’s counter, to be used in a grocery store, which moves groceries along it from where the customer places the groceries to the cashier. These counters had been widely and successfully used beforehand. While each element of the invention was known beforehand to “prior art,” the concept of a counter with an “extension” was decided to constitute a “new and useful combination.”
The Supreme Court, in its decision, first pointed out that the extension of the counter in and of itself does not constitute an invention for the following reasons:
- The extension is not mentioned in any of the patent’s claims
- Even if the extension were mentioned in the claims, it would not constitute an invention because changing the dimensions of a countertop is a contrivance that any vendor/user of the counter would do to suit the needs of the merchant
- Even if the extension were patentable, the counter still wouldn’t be patentable because it simply was a combination of old elements
This left the question as to what sort of invention would be patentable, if nothing tangible was new and the only inventiveness present was in bringing old elements together. The Court points out that there had never been a PRECISE definition of what sort of test should be used to determine the patentability of combination patents (which have been sustained before). Generally, however, it is agreed that the combination must perform some “new or different function;” namely, the whole must exceed the sum of the parts. It was found that the invention in question is wanting of such an effect, and the extension of the counter does not add any new functions to the invention.
The owner of the patent argued that the patentability of the invention lies in (extensive) evidence that “this device filled a long-felt want and has enjoyed commercial success.” The Court, in reply, stated that commercial success and meeting a need do not make an invention patentable if there is no “inventiveness” in it. While the addition of a counter expansion made the invention better for business, many “ideas in business are not patentable.” Thus, the patent was declared invalid.
The third issue called into question during this case was actually addressed in the concurring opinion at the end. Justice Douglas believed that the invention wasn’t patentable for an entirely different reason. Douglas stated that the point of patent protection is to encourage innovation in science and engineering, and thus serve a higher end than protecting every little idea people come up with. He then basically started to complain about how far the Court has fallen, to have to argue over something so trivial as counter extensions.
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.
It is worth noting that this addition to the US Code was described as simply putting into writing the precedents that had been consistently used by the Courts beforehand. At the same time, it is widely accepted that Section 103, while complying with the precedents, keeps with the spirit of the Constitution and the purposes which the founders, specifically Thomas Jefferson, intended for the patent system: namely, that there be a balance between rewarding those who promote the progress of Science and engineering and between avoiding a monopoly on ideas.
Lyon v. Bausch & Lomb (1955)
In Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) the main issue at hand lied in the application of the Act of 1952, which adopted §103 of the US Code.
The invention in question is a process involving the coating of lenses with an inorganic salt to prevent reflection and scratching of the lens. While this process had been used before, the new part of this invented process was keeping the workpiece heated before, during and after the process, whereas before it was not heated during the coating process. In question was whether this added step was enough to warrant a patent.
On one hand, if this case had come up twenty or thirty years ago, the step would be enough to support a patent. It met a long-felt need that, for years, no one had been able to fill or come up with a satisfactory solution. This meant that the change to the process, however small, could not have possibly been obvious because it would have been discovered beforehand.
On the other hand, under the now-codified Section 103, the invention would be found invalid. Learned Hand, the judge delivering the opinion, stated that:
- 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
In the end, they decided that they could not retroactively apply the law to this invention, and it was upheld.
Graham v. John Deere (1966)
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
The invention in question was a plow with a clamp used to absorb shock as the plow goes through rocky soil and thus prevent damage. The petitioner of the patent, Graham, had modified the invention in question from an earlier patent he held, similar except in that the new invention included a bolted connection and stirrup, as well as switched the position of the shank. This new setup, allegedly, allows for greater flexion of the shank.
The design and elements of the invention were all found in the prior art, namely Graham’s older patent and the Glencoe patent. Since there was a wide scope of the prior art that could not be differentiated between the claims in contention in this case, it could not be found to be nonobvious. Further, the Courts found that, if the change in flex was the crucial difference between the contested patent and the prior art, it is “evident” that changing the position of the clamp would achieve this. Thus, the patent fails again to meet the nonobviousness requirement.
U.S. v. Adams (1966)
In US v. Adams, 383 U.S. 39 (1966), a main point made in the case was that all the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.
The invention in question was a wet battery using electrodes of magnesium and cuprous chloride. The US government, alleging that Adams’ patent was invalid, entered into evidence a number of patents and treatises showing the prior art of the battery. However, upon closer examination of the prior art, it becomes clear that no one could connect the prior art with what was invented. For instance, only a couple of the patents actually made mention of using water in a battery. Others only mentioned using magnesium in passing, and was not actually used in an electrode. Another patent involved using cuprous chloride, but not with water.
As a result of these findings, while wet batteries had been made before, there was no evidence from the prior art patents that it was even possible to substitute in electrodes of different materials. In fact, the government admitted that:
- the Adams battery 'wholly unexpectedly' has shown 'certain valuable operating advantages over other batteries' while those from which it is claimed to have been copied were long ago discarded.
These unexpected results show that the invention must be nonobvious. Though the elements were each known in the prior art, it is clear that any person “reasonably skilled” would not come to the conclusions that Adams did.
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 still seems to stick to the language of Section 103. It determined that using a heater in blacktop laying was obvious to anyone skilled in the art, as it had been used in the past for the process.
The issue of using nonobviousness as a standard for determining patentability of an invention first appeared in Hotchkiss v. Greenwood, where it was decided that it was not enough for an invention to be new and useful. It also had to show that some sort of "inventiveness" was needed, and could not be the result of the work of a "skilled mechanic," such as substituting out the material of a previously known device and calling it an invention. This language, namely "skilled mechanic" and "invention" would become a precedence for future issues on nonobviousness. A hundred years later, A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) introduced more precedents for dealing with more difficult issues of nonobviousness. Namely, it is not enough that an invention meet a long-felt need if that invention is something any shrewd businessman could come up with, and that an invention that is a combination of old elements known to the prior art can qualify as being nonobvious only if it does something new.
Shortly thereafter, the precedents that had been used up until then were finally put into law in Section 103 of Title 35 of the Us Code. Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) spelled out how the new law was not so new, as it was simply putting into writing what had been widely practiced by the Courts beforehand. 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." For an invention to be nonobvious, it had to have some differences between itself and the prior art, and the inventor had to have more than simply "ordinary skill" in the art. US v. Adams, 383 U.S. 39 (1966) showed that there are secondary considerations to take into account when one is considering the nonobviousness of an invention, such as it filling a long-felt but previously unsolved need. The reasoning was that, if people really needed this device but had not found a solution yet (when they must have been actively searching for a solution), the invention/solution must be nonobvious.
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.
In this case, there was not enough evidence to show motivation for the combination; therefore, the Courts could not use it as reason to show nonobviousness.
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. Details regarding secondary considerations are found in the respective section below.
- 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.
Under 35 US § 103:
- 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.
However, there are secondary considerations that can be taken into account, especially as enumerated in Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) by Learned Hand.
- commercial success of the invention;
- long-felt but unsolved needs;
- failure of others to find a solution, etc.
While the US Code will always precede these considerations, they are useful in determining, at a deeper level, whether an invention is obvious or not. For example, in the aforementioned case with Learned Hand, it was demonstrated that, while keeping the workpiece heated throughout the coating process is such a small difference from the prior art, it could not have been obvious because others in the field had sought after the result of the process for years, to no avail. This meeting of long-felt needs thus means that the process qualified as being nonobvious.
Relationship with Novelty
“Nonobviousness” and “Novelty” are two separate sections of the US Code, as well as two separate tests of patentability that must both be met by a valid patent. Section 102 regards novelty:
- A person shall be entitled to a patent unless—
- (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
- (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
While Section 103 regards nonobviousness:
- 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.
It can be seen that, even if an invention is found to be novel or new, it must still be nonobvious or distinct enough from the prior art to warrant a patent.
Nonobviousness vs. Invention
The transition in language from “invention” to “nonobviousness” for determining this factor occurred with the Act of 1952, which added Section 103 to the US Code. Congress decided that “invention” was too vague a word that led to “a large variety” of similarly ambiguous expressions for determining patentability. The intention of using the new language, it was argued, was to codify precedents that had widely been used in the courts before the passing of the act.
The Inventive Step
Part of the reason for the language of Section 103 is to say that it doesn't matter how a person goes about inventing a machine or process. Whether or not something is obvious has nothing to do with the amount of time spent coming up with the idea, whether it resulted from a "flash of brilliance" or from years of research and study.