Talk:Reiner v. I. Leon Co., 285 F.2d 501 (1960)

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Courtney

The original application was filed on July 24, 1946 and a patent was issued on January 18, 1949. An application for reissue was filed on July 12, 1949, on which the reissued patent in suit was granted on November 1, 1949. Before the date of the original application a number of patents for hair curlers had issued, and it is against the background of these that we must appraise the invention in suit.

We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35). That has been the statutory definition since January 1, 1953.

The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant? In the case at bar the answers to these questions all favor the conclusion that it demanded more intuition than was possessed by the "ordinary" workers in the field. The needs were known, but the purpose to fulfil them with that minimum of material and labor disclosed in the patent had not appeared; and economy of production is as valid a basis for invention as foresight in the disclosure of new means. In the case at bar the saving of material as compared to anything that had preceded, was very great indeed; the existing devices at once yielded to Reiner's disclosure; his was an answer to the "long-felt want." 8

Maura

We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35). It is not for us to decide what "discoveries" shall "promote the progress of science and the useful arts" sufficiently to grant any "exclusive right" of inventors (U. S. Constitution, Article 1, § 8). Nor may we approach the interpretation of § 103 of the Title 35 with a predetermined bias. 7 The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant? A claim must of course read upon the specifications, but the specifications, unless so declared, are only an example of what the claim is intended to cover; it is a species of a broader genus, else no claims would cover anything not literally described in the specifications.