User:E W Hitchler

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Electric Brush

The point of this patent was to improve the electrical brush. They wanted the brush to be capable of operating at high current densities and high speeds with a reduction in the loss of amps as well as low noise. They wanted to reduce the mechanical load. They wanted to incorporate an electrical connection to stationary, moving, and rotating parts. They wanted to have the brush capable of being used with and without lubrication. They wanted to have a new method for the production of multifibers that will reduce friction and allow fibers to individually flex.


With the analysis of A. & P. Tea Co. v. Supermarket Corp. the first patent I found from my patent of the Electric Brush would be patentable. The patent is 3,357,824 for Copper Alloys. The Copper alloy has high conductivity and with such small and uniform grain size which gave it superior ductility. The invention is to improve the the copper base alloy to give it high ductility but still attaining high electrical/thermal conductivity and strength. The analysis of the A & P case was improving a system but the court said that this was just throwing a bunch of things that existed and lengthening the counter. While it sounds simple, this invention is very scientific and not just any person can add elements to the alloy to help increase the conductivity. I do feel that it would satisfy the nonobviousness requirement of 35 USC 103. I do think that any ordinary person in the skill would be able to this invention because the work is very technical. However, as our society has progressed the nonobviousness rule has changed. Obviously, not everyone can do something that someone else can do, so that is why i think that the nonobviousness rule has some give for certain situations.

With the analysis of A. & P. Tea Co. v. Supermarket Corp. the second patent I found from my patent of the Electric Brush would be patentable as well. The patent is 3,254,189 for Electrical Contact Members having a Plurality of Refractory Metal Fibers Embedded therein. The patent is similar to the other patent in the sense it is trying to improve something that already exists. Now the withe A & P case thats what the invention was, however, the inventor merely merged existing things together and then just lengthened the counter. That was a great idea to help things go faster, but I don't think that it was very novel. Then, sometimes there are lots of patents that are improving an existing idea already, so it is hard to determine what does count and what doesn't count. And with the nonobiviousness rule, it goes along with what I said for the earlier patent. I do believe any regular person skilled in the art can come up with such an idea, but that is why the nonobviousness rule has evolved and has some give in my opinion.


The Graham 811' patent is obviously similar to the Graham V. John Deere case. The 811' patent states "The spring 66 thus retained in compression to keep the head 72 in rocking engagement with grove 68 of the gripping portion or face 63 of the fulcrum plate 63 and the fulcrum plate in contact with the lower face 63 of the end portion of the shank 33 and the upper face 34 of the end portion of the shank 33 against the clamping portion 42...The ground working tools are thus resilently supported between the clamping embers or parts and are adapted to rock thereon as permitted by action of the springs to effect pumping action of the ground working tools incidental to drag of the tools through the ground and resiliency of the compression springs so as to produce the furrows the and chisel cuts indicated at "a" and forming the pockets indicated "b" in Figs 4 and 5 of the drawings." The pumping action of the spring is to give into the conditions of rocky soil and "adapt". Furthermore, the article later states "the fulcrum member and extending through an elongated opening in said shank and through the shank to said bracket and provide sufficient longitudinal relative movement between the shank and fulcrum member to accommodate oscillation of the shank, and a spring having one end engaged with said rod and the other end engaged with the bracket for yielding permitting rocking movement of the fulcrum member for effecting said pumping action of the ground working device." The patent is very obvious to the device by John Deere, which is "a device designed to absorb shock from plow shanks in rocky soil to prevent damage"

However, the patent maybe nonobvious because John Deere is using a "clamp" and not a spring. Plus they say it produces an "old result in a cheaper and otherwise more advantageous way." Which if it is, its advancing and promoting the Progress of.. Useful Arts. Furthermore, it seems that Graham's 811' patent is more of a concept for the whole plow and not specifically the absorption spring, but maybe I am misreading the patent. Though it is hard to say because the products are very similar, but if anything John Deere is perfecting the concept with an more effective way.


NONOBVIOUSNESS Contents [hide] 1 Historical Development 1.1 Hotchkiss v. Greenwood (1850) 1.2 A&P Tea v. Supermarket Equipment (1950) 1.3 35 USC 103 (1952) 1.4 Lyon v. Bausch & Lomb (1955) 1.5 Graham v. John Deere (1966) 1.6 U.S. v. Adams (1966) 1.7 Anderson's Black Rock v. Pavement Salvage (1969) 2 Suggestion to Combine 3 Objective Tests 4 The Inventive Step 5 Relationship with Novelty 6 Nonobviousness vs. Invention 7 Secondary Considerations 8 Ordinary Skill in the Art

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.

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. 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. The Graham v. John Deere case includes two different cases. There was the case that involved John Deere and mechanism for plows, but there was also the case that involved the tops of spray bottles. The patent for the Graham case related to a spring clamp that permitted plow shanks to be pushed upward as the plow was dragged through rocky soil terrain. The spring then forces the shanks back into postion once the mass is gone. The court did an engineering analysis and said that the patent was not valid because it failed the obviousness test. The other case involved the shipping design of sprayer caps. One cap engaged with a washer or gasket which rested on the upper surface and the cap screwed directly on the container. The court decided that the patent was not valid because it failed the non-obviousness test.

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. The Adams case relates to an electrical battery that is non-rechargeable. The concept of the invention was that it was light in weight, provided constant voltage, needed no acids and it was operable in extreme cold and extreme hot conditions. However, the only down side was that once the battery was activated it can't be turned off. When Adams went to go present his invention, the government stated that what he was stating was absurd and it couldn't be done. However, in WWII, the government ended up using it and they never notified Adams and when Adams did find out and asked for compensation, he was denied. In the end, it was found that Adams patent was valid and what the government did was wrong. The government tried to say that his invention lacked novelty, even though his battery was water activated and no other battery was like his.

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 known elements can become patentable. This case involves the problem when one puts together existing ideas or concepts together in another way and if it can become patentable. The case specifically presents the "Means for Treating Bituminous Pavement." The problem was that when they use to put on new material there would be formation of cracks and dirt and water would enter causing deterioration. The patent uses an old technology which was used in 1905 to heat up asphalt. After that, the patent suggest to use a spreader for putting down bituminous material and then finally a tamper and screed for shaping the new material. The respondent explained that the patent uses a combo of prior art, for a new and useful concept to get rid of a cold joint. At the end of the case, the final verdict was that it was not an invention by the obvious and non-obviousness standard.

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

Relationship with Novelty Novelty is one of the standards that must be passed in order to obtain a patent. It deals with whether an invention is new or not. Sometimes there are ideas that seem new, but are really just a new concept of the idea. So in reality, the idea is more innovative. However, maybe that does deserve patentability.

Nonobviousness vs. Invention Nonobviousness is a term that I have learned about in IP Law class. It deals when an individual is trying to patent something and the office will determine if it is patentable by three simple benchmarks it has to past, (Non-obviousness, novelty, and utility). Many of the cases that come up deal with non-obviousness in the sense that could an individual who is familiar with the art, come up with the same idea. If the answer is yes, then the item or concept is not an invention.

Secondary Considerations Secondary Considerations are a last resort option that one could fall back on if they have been denied a patent due to an "obviousness" rejection under Section 103. Some secondary considerations are the following: the success of the invention commercially, the unresolved needs, failures by others, skepticism by experts, the admiration by others, and copying of the invention by other individuals.

Ordinary Skill in the Art A person with ordinary skill in the art comes into play when a court is looking into a patent and they are determining whether or not an invention will pass the obviousness and non-obviousness standard. The court will look into this when there is an invention that is similar to something that exists or if it does a similar function or if it uses a bunch old existing arts and then combines them to do some task.

Reiner v. I. Leon Co. (full text) Reiner v. I. Leon Co. South Corp. v. US (full text) South Corp. v. US



To determine whether or not one is able to attain a patent, an individual must take their invention to the patent office and their invention must satisfy three requirements, non-obviousness, novelty, and utility. If the invention satisfies the three requirements, the inventor attains a patent for 17 years and reaps the benefits of having exclusive rights to their invention. However, attaining a patent can be challenging because there are lots of problems when trying to determine whether an invention satisfies the three requirements. One problem is satisfying the requirement of non-obviousness. This requirement is found in the United States Code: Title 35, Section 103 (35 USC 103), and is sometimes known as the most difficult patent issue to determine with facts. The following document will break down the requirement of non-obviousness by first, providing a guideline of non-obvious, second, outlining the policy considerations that provide a foundation for the requirement, third, a history of the subject through various cases, and finally, a proposed standard for non-obviousness. There are fundamentally three parts that determine whether an invention is non-obvious as well as secondary considerations. The first part is the content and scope of the prior art. This is talking about the relevant subject matter in the background of the art in which the idea or concept is being patented. The next part is during the time the inventions was made what are the differences between the subject at hand and the prior art. This is describing when the inventor is inventing his/her invention; the subject matter has to have obvious differences from the prior art that is specific to the same field. The last part is in the art, the level of “ordinary skill.” This means that the subject matter pertaining to a person that in the same art could do with basic skills. Furthermore, there are secondary considerations that help determine non-obviousness. First, there is the invention’s success as a product. Second, the unresolved needs that have been long felt. Third, the failure of others in a similar background. Fourth, praise by others. Fifth, the invention being copied by other competitors. Sixth, the identification of a problem. Seventh, teaching away by competitors in the art. And eighth, lack of support of the industry relating to the new invention. In 1421, Filippo Brunelleschi, a Florentine architect received a patent for a hoisting gear mounted on a barge that carried marble along the Arno River. Then in 1449, King Henry VI issued a 20 year patent to John of Utynam because he showed England how to create colored glass. When the United Sates became independent of Britain and wrote the United States Constitution, they included a section that alluded to patents. In Artile I, Section 8 of the United States Constitution, it states: “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;” Then in 1790, the first Congress adopted the Patent Act and on July 31, 1790 issued the first patent to Samuel Hopkins of Vermont for a technique to produce potash. From then on patents started to be issued. However, as more patents were issued problems arose with a threshold for inventiveness. This would ultimately transform into the idea of non-obviousness. Prior to 1850, when an invention came out, the only requirement was novelty and utility and non-obviousness were unheard of. The case that basically established non-obviousness was Hotchkiss v. Greenwood (1850). The case was described that the patent granted for a “new and useful improvement in making door and other knobs of clay used in pottery…” The knob of the door used to be made out of a metal or wood, and the new idea was to use clay instead because it was cheaper. They found that the patent was invalid because that despite the patent satisfying the requirement of a new idea and it was useful, it didn’t require any more ingenuity and skill to construct it. It was stated that, "....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." Therefore, after this case it was made clear that not only must a invention satisfy the novelty requirement, but it must also satisfy the non-obvious requirement. The next case that relates to no-obviousness is A. & P. Tea Co. v. Supermarket Corp., (1950). This case relates to a cashier’s counter that will be able to move groceries to a clerk and repeat the process. The main idea behind this invention is the counter was extended and sped up the process providing more convenience to the customers. The lower courts approved the patent because “the conception of a counter with an extension to receive a bottomless self-unloading tray with which to push the contents of the tray in front of the cashier was a decidedly novel feature and constitutes a new and useful combination.” The Supreme Court reversed the decision because even though it was new and useful, “The defect that we find in this judgment is that a standard of invention appears to have been used that is less exacting than that required where a combination is made up entirely of old components.” The case dealt with three significant issues. First, it dealt with the unresolved needs that have been long felt, which is one of secondary considerations for non-obviousness. Second, it brought up the fact that Thomas Jefferson wanted patents to be issued that promoted the advancement of science and furthered human knowledge and was new and useful. Thirdly, it brought up that all inventions are basically a mixture of old elements. The next case presented is Lyon v. Bausch & Lomb, (1955). This case presents a process to coat optical elements and improve the process to produce a “hard, durable and tenacious evaporated film on a surface of optical elements…” Lyon argues in the case that his two step process was unique and no other previous processes had this sequence. The court in the end stated the following: “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.” The case alluded back to the problem of whether a person in the same art and with ordinary skill could have done the same as Lyon, but clearly the court said it couldn’t be done. The next case shown is Graham v. John Deere (1966). The case relates to chisel plows. The problem with the chisel plow was that the shanks were attached rigidly to the frames. When dragged through certain terrains that contained rocks, a vibration was sent throughout the frame and titanic forces were transmitted and cause the shanks to break. Graham solved this problem by using a spring clamp instead of rigid attachment, this would allow the plows to be pushed and come back down when an object was encountered. The case touched on a lot of requirements to determine non-obviousness and a few of the secondary considerations as well. Since, John Deere had a problem with Graham’s idea, the content of the prior art and the differences between them was a big a factor as well as the ordinary skill of the relevant art. Now, despite that the invention satisfied a couple of the secondary considerations such as long felt needs that had not been resolved as well as no one else had found a solution to the constant breaking of shanks, the court still found the patent invalid. The court stated “The only other effective place available in the arrangement was to attach it below the hinge plate and run it through a [383 U.S. 1, 25] stirrup or bracket that would not disturb its flexing qualities. Certainly a person having ordinary skill in the prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank, would immediately see that the thing to do was what Graham did, i. e., invert the shank and the hinge plate.” This basically is the requirement of “level of ordinary skill” and the court said that what Graham did presented “no operative mechanical distinctions, much less nonobvious differences.” The next case is U.S. v. Adams (1966). The case describes the invention of a new, non-rechargeable battery. The battery’s specifications were as follows: provided constant voltage, did not need to use acids, light weight with respect to capacity, no harmful fumes generated, and could operate in extreme hot and cold conditions. However, the down side was that once it was activated it could not be shut off. The Government challenged Adam’s patent on the grounds of novelty as well as obviousness. They found that Adam’s battery was novel due to the fact this battery was water activated and no other battery was like that. Furthermore, Adam’s battery was non-obvious since “the operating characteristics of the Adams battery have been shown to have been unexpected and to have far surpassed then-existing wet batteries.” The battery did contain elements “well known in the prior art,” however; the manner in which Adams combined them required “a person reasonably skilled.” With all these cases determining whether some patents are non-obvious or not, I would like to propose a standard for the non-obvious requirement. To start off, the item would need to pass the following: It has to be different than related art. It has to be relevant in the prior art. It can’t be done by an ordinary person in the skill of the art. (An engineering analysis will be needed) It must solve a problem, even if the problem has been solved. It must better an idea, but needs to give rights to the previous idea. If it is a combination of existing elements, the manner in which assembled cannot involve a person of ordinary skill in art, but high skill. If it has results that are not expected. If many people are trying to copy it. This is the standard, and an "it" must be satisfied and "if" will be a secondary consideration.


United States District Court, S. D. New York. DENNISON MANUFACTURING COMPANY, Plaintiff, v. BEN CLEMENTS AND SONS, INC., Defendant.

No. 74 Civ. 979 (CES). March 14, 1979.

The case is about the infringing of the device to connect clothing tags to the clothes themselves. The idea was to use plastic molded attachments to mark the clothing, to convey info to the customers, (brand name, price and size)The district court stated that the none of the claims of the patent were invalid because they didn't point out the distinct subject mater of the invention. Furthermore, that despite parts of the device existing in the prior art, it was not obvious to one of ordinary skill in the art. Then the secondary considerations of commercial success, long felt need, industry recognition and failure of others all helped. In the end, the claims were invalid and infringed.