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.
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.
The Inventive Step
There were two significant characteristics of the inventive process that are discussed in Lyon v. Bausch & Lomb, 224 F.2d 530 (1955).
- The product that was invented (chemically treated lenses), had been desired in its field for many years prior. If there is a large need for a specific invention it can be assumed that experienced scientists and researchers have been focusing time and money towards the development of the new concept. In the case of Bert Adams, he already knew the result he wished to achieve. It was a matter of developing a method or process that allowed him to reach that result. With so many competitors racing to discover, the nonobviousness of the invention was clear. Had it been an obvious improvement there would have been a prior inventor and the product would be out on the market in wide production already.
- Previous inventors had tried similar methods but failed in a variety of manors. According to LYON vs. LOMB a prior inventor, Cartwright, had developed a method of treating lenses similar to that of Dean A. LYON but had abandoned the progress after the invention stage because he deemed it to be not rugged enough to be successful. Because of this, Cartwright’s method was not considered a formal invention but a failure. Failures cannot negative the nonobviousness of an invention.
Relationship with Novelty
A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) displays an interesting connection between novelty, prior art, and non-obviousness. According to the court an invention may consist of prior art but the total value of the invention must be greater than the individual sums of prior art that it is comprised of. In the case of A&P the cashier’s stand contained multiple features of prior art that were simple combined to achieve an expected and obvious result. This prevented the invention from being patentable because, as the court argued, it did not encourage innovators to develop new ideas. Instead it merely fostered new combinations of prior art that would not advance society any further than a skilled laborer could comprehend.
Another case that resulted in a similar conclusion of non-patentability was Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969), which sought to combine features of a road paving device that had previously been invented. In this case it was ruled that the prior art did not achieve any new results than it had originally and the patent was obvious to a skilled laborer.
According to these two cases the novelty of the invention with respect to prior art was not an issue as long as the result was greater than the combined sub results. This concept of 1+1=2 reflects the obviousness of an invention that only combines the results of prior art without contributing anything new of its own. There in lies the fundamental connection between non-obviousness and the novelty requirement for an invention. The invention does not have to be novel with respect to prior art as long as it contributes a new and unachieved result.
Nonobviousness vs. Invention
Hotchkiss v. Greenwood facilitated a long debate about the non-obviousness of the claimed invention (door handle or nob). The case emphasized that certain features that may be deemed an invention, because they are different from prior art, can still be considered obvious and thus not patentable. It is important to determine which features are non-obvious according to prior art and which are not. This allows for an accurate validation of a patent to be made without overlapping obvious factors of the original invention.
In Hotchkiss a patent was questioned on its validity over the use of select materials in the design of a door handle. According to this design the handle was to be created using techniques and designs that had already been discovered and used. The court decided the patent was not valid on many accounts, one of which being its non-obviousness. According to the court the substitution of a material into the design created a new product that had different strength and wear features, but it did not exhibit the quality of non-obviousness. A skilled worker was said to be able to combine the new material in the same manor as the old to create this new product. This obviousness put the weight of the patent on the concept of substituting a new material in for an old, which isolates it the use of that new material. This is not patentable because of its negative effect on future innovation.
There are three main secondary considerations that are necessary to determine the patentability of an art even if it is on the brink of being obvious.
- Advancement of innovation. The fundamental concept of granting patents is to promote learning and sharing of ideas in every sector of development. A patent is given in order to reward the owner with a limited monopoly in which he/she can benefit from over the course of its life span. If this monopoly is granted to an art that is not advancing innovation or will significantly deter the advancement of innovation the patent is considered a hindrance and is thus not given. This concept works as a check to determine if a patent is acting in the best interest of the public.
- Rewards concept discovery. In order for a product to be patentable it must show that its concept is one that is new and novel. Patents should be granted if the concept or invention is a clear demonstration of a new piece of innovation. If the concept is not in fact, a discovery, and only a combination or manipulation of a previous idea, rewarding it with a patent only hinders future innovation.
- Public demand.Patents have been grated to advance society in any and every way technology and development is capable of. If it is obvious that the public has a use for a new product through large sales profits or a rapid turnover rate, it is important to reward the creator. This concept uses public demand to determine the worth of an invention as well as its level of contribution to society.