Snooki's Nonobviousness Page
In order to further the development of science and technology the United States implemented the patent system. This system has been successful, however, it has led to confusion between what does and does not constitute a valid patent. The original use of the vague word “invention” led to many of this ambiguity. However, with the Patent Act of 1952 Congress created Section 103 of US Code which decided that a patent must be “non-obvious.” Throughout the Supreme Court cases the different criteria for what constitutes a non-obvious invention can be found. The Hotchkiss v. Greenwood set the original foundations for the non-obvious requirement when it addressed the patentability of combining different known creations. In this case the court decided that an inventor must create a final product which is greater than the sum of the parts. The inventor’s combination must be new and useful and cannot be obvious to a person of ordinary skill in the art. This is to say that substituting materials in a fashion that only improves the whole because one of the substituted parts has more desirable qualities is not worthy of invention. The A&P Tea v. Supermarket Equipment case furthered the development of the non-obvious requirement. This case gave more insight into what specifically could be considered obvious. In this case, combinations of previous creations were considered once again. However, this case furthered the requirements for a patent’s obviousness by setting the precedent for secondary considerations. This showed that the court may consider things such as commercial success, meeting of a longstanding need, and previous failures to review a patent’s validity. In Lyon v. Bausch & Lomb, the court continued with the nonobviousness of a patent by examining the failed attempts prior to a successful invention. This is to say that the court looked at the attempts at creating an invention similar to that of the patent which had been unsuccessful. Additionally, furthering the secondary considerations the court looked into the impact of the invention on the product’s market to determine if the device was needed. In Graham v. Deere the court established a more concrete set of criteria for an invention’s patentability. The criteria included the scope of prior art, the invention’s differences from prior art, level of skill in the art, and the secondary considerations previously mentioned. Also, in this case the court established that the need for a moment of genius was not required to make an invention. This was due to the fact that many great inventions take years of research and are not a result of one moment of ingenuity. In U.S. v. Adams the court continued to establish rules regarding the obviousness of inventions. The US v. Adams case dealt with the obviousness of combinations and reviewing the prior art. Although an invention may appear to be very similar to that of prior art, the end result must be considered. If the inventor has a combination which outperforms previous inventions or even is contrary to the teachings of previous inventions than it should be considered patentable. With the institution of Section 103 (and thus the non-obvious requirement) Congress set a new standard for patentability. The courts furthered the criteria with influential decisions and set guidelines for future patents. However, the patentability of an invention will never be a black and white topic and the criteria will continue to develop as years pass.
The following are 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
The inventive step is the precursor to the idea of nonobviousness. The basis for this aspect to a patent is first seen in Hotchkiss v. Greenwood. In this case the court determines that a patent is valid only if the skill required to create the invention was greater than that of an ‘ordinary mechanic’ in the field of the invention. The court said that this level of skill is required of a patentable invention. This ruling is to say that without the ‘inventive step’ of a skilled mechanic an item is not patentable. If an average mechanic were able to create the invention than issuing a patent would hinder further scientific development (as the solution would have been obvious). The inventive step sets the stage for the nonobvious requirement by requiring a patent to be more than the work of an average mechanic.
Relationship with Novelty
The Patent Act of 1952 established Section 103 of the US Code and the requirement for a nonobvious invention. However, in addition to being a nonobvious creation, it must also fit all requirements to Section 102 of the US Code. From this section it can be seen that the invention must be ‘novel.’ The patent must be a new creation, not known in prior art, and it must be nonobvious to an average person in the field of the invention. A patent’s validity is dependent on its ability to meet both the novelty and nonobvious requirements.
Nonobviousness vs. Invention
The Patent Act of 1952 added Section 103 to US Code. Congress had determined that the use of the word ‘invention’ was leading to uncertainty when trying to determine patentability. The act created a written standard which the courts had already been practicing. The implementation of this act and the resulting ‘nonobvious’ requirement was seen in Graham v. John Deere. From here we see that congress had intended to avoid the vague expression, ‘invention,’ and establish the more definable nonobvious requirement.
The court determined that there were secondary aspects to a patent which may be beneficial when determining the patent’s nonobviousness. A patent, however, cannot be considered valid based on secondary considerations alone—all primary considerations must be met as well. Secondary considerations are not strict rules and cannot be applied without proper consideration of the patent. After all primary considerations for the patent are met, the secondary considerations may further the patent’s case for nonobviousness. Examples of secondary considerations include profitability or popularity, meeting a longstanding need and failure of others to solve a problem.