Nonobviousness
Patent Law
Prof. Merges – 3.10.08
Basic Conundrum
• Why is the doctrine necessary?
• Why not take an approach similar to that
taken in the utility field: “[W]hether [an
invention] be more or less [important] is
a circumstance very material to the
interests of the patentee, but of no
importance to the public. If it be [trivial],
it will silently sink into contempt and
disregard.” Lowell v. Lewis, 15 Fed. Cas.
1018 (C.C D. Mass. 1817)
Why not permit trivial patents?
• Profusion of Paltry Patents:
–Each patent individually will
not impose significant output
constraints, but ...
• Economically Significant Patents:
– Technical Triviality  Economic
Triviality
– Thus, a patent on an obvious
development may impose significant
output constraints.
Policies
• Two possible applications of the doctrine; each has its
own policy considerations:
• Technically trivial but economically
valuable developments (e.g.,
Selden).
–Policy 1: There is no reason to
grant a patent because the
development would occur
anyway. Granting a patent will
lead only to social costs of
monopoly with no benefits.
–Policy 2: Obvious patents may
compromise the incentives to
make nonobvious inventions.
• Technically and economically
trivial developments.
–Policy: Preventing “thickets” of
patents; increasing search costs
for other inventors and
businesses.
Hotchkiss
Hotchkiss
“[U]nless [there is proof of] more
ingenuity and skill … than were
possessed by an ordinary mechanic
acquainted with the business, there
was an absence of that degree of skill
and ingenuity which constitute
essential elements of every invention.
In other words, the improvement is the
work of the skilful mechanic, not that
of the inventor.”
Graham v. John Deere
• Background
• Supreme Court Opinion
• Federal Circuit adaptation
The Graham-Hoeme
Chisel Plow
• It was designed by Fred Hoeme to leave large clods of
soil resistant to wind erosion.
• The patent was issued in 1936, within twelve months of
application.
• Hoeme manufactured 2000 plows before 1939.
• In 1939, Hoeme sold the rights to his invention to William
T Graham for $38,000.
• Graham started the Graham-Hoeme Plow Company.
• In 2000, the American Society of Agricultural Engineers
recognized the development of the “Graham-Hoeme”
chisel plow as one of the most significant developments
in agricultural engineering in the United States.
Hoeme’s Clamp
• One of Hoeme’s first patents was a patent
covering the clamp that attached each plow
shank to the metal “I”-shaped beams of the
plow carriage.
• This clamp worked fine for farming in the
Great Plains, where soil is largely free of
rocks.
• When Graham sold the plow in northern
states, rocks in the soil caused damage not
only to the plow bit, the shank, and the clamp,
but also to the I-beam.
• This damage would result in failure of the
product.
Graham’s First Solution
Attempt
• Graham substituted a reinforced “brace
clamp” that would distribute the forces of
rock collisions across the entire I-beam.
• While this brace tended to prevent the lower
flange of the I-beam from bending, it did
nothing to protect the chisel and the shank.
– The shank and chisel would actually fail more
rather than less frequently.
• The clamp was too simple, so courts held the
patent invalid for obviousness.
Graham’s Spring Clamp
• Graham’s second attempt at solution was
more successful.
• He added a spring mounting so that the
clamp would give way when the forces on
the shank were too great.
• This invention successfully reduced
bending and breaking of plow parts in
rocky soil.
• This invention also produced vibratory
action that created alternating pockets
and ridges that were capable of storing
moisture that could sustain crops during
dry periods.
Graham’s ‘811 Patent
• The spring mounting was not entirely
novel, as is shown in the “spring tooth for
cultivators,” patented in 1893.
• Thus, Graham was not entitled to a broad
patent.
• However, the Fifth Circuit court of appeals
later called his ‘811 patent “a meritorious,
yet not an outright pioneer invention.”
Graham’s ‘811 Patent
• Graham began marketing the clamp in the late
1940s or early 1950s, and continued producing it,
with some modifications, for at least a decade
and a half.
• Some flaws became apparent with the design
over time:
– The shank would rub against the fixed upper plate of the
clamp and cause wear. This wear was troublesome
because the plate was connected directly to the frame of
the plow and was difficult to replace.
– The shank was held within the clamp only by the spring
rod with a large hole. As it was pulled backwards, it
would cause wear and damage in the spring rod.
Graham’s ‘798 Patent
• Wear against upper plate and spring rod
provided impetus for design of new clamp.
• This is the patent at issue in Graham’s suit
against John Deere.
• Changes in the clamp:
– Hinge plate has been moved above the shank so that
the shank does not come into contact with the fixed
upper plate.
– The shank is secured to the hinge plate by a nut and
bolt arrangement at the forward end and a stirrup at
the rear.
• Graham conceived of the design in 1950 but did
not file patent application until August 27, 1951.
Graham’s ‘798 Patent
• Examiner concluded that no new or
unexpected result is obtained by the
modifications.
• Graham came back with arguments as to
why the new arrangement showed an
unexpected result.
• Examiner allowed the patent to be issued
with two claims in February of 1953.
Clark Trivia
"It's not that he's a bad man," rued [Pres.
Harry] Truman. "It's just that he's the
dumbest sonofabitch I ever met." Clark
resigned in 1967 to avoid any question of
conflict of interest after President Lyndon
B. Johnson appointed Clark's son,
Ramsey, to serve as Attorney General.
35 USC Sec 103
§ 103. Conditions for patentability; nonobvious subject matter
(a) 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.
Graham points
• “[T]he 1952 [patent law] revision was
not intended to change the general
level of patentable invention.
• Ultimate question of patentability is one of
law; lends itself to “several basic factual
inquiries”
The Graham Test
• Scope and content of the prior art
• Difference between the prior art and the
claims at issue
• Level of ordinary skill in the pertinent
art
– P. 677
Secondary consdiderations
• “Might be utilized . . .”
• Commercial success
• Long felt need
• Failure of other
Federal Circuit: Post-Graham
1. Elevation of “secondary” factors to 4th
Graham factor
2. “Reasonable expectation of success”
standard – ex ante perspective
3. Development of Suggestion Test –
may be reviewed by Supreme Court
Federal Circuit and Secondary
Factors
• Elevation of “secondary factors” to a
de facto “4th Graham factor”
– See, e.g., Hybritech v Monoclonal
Antibodies, Inc., p. 736
– “objective evidence must be considered
before a conclusion on obviousness”
• P. 739
Federal Circuit – post-Graham
For the Johnson article to render the
claimed invention obvious, there must
have been, at the time the invention
was made, a reasonable expectation of
success in applying Johnson's
teachings.
Life Technologies, Inc. v. Clontech
Laboratories, 224 F.3d 1320 (Fed Cir 2000)
In re O'Farrell, 853 F.2d 894, 903
(Fed.Cir.1988)
“Obvious to try” is NOT the appropriate standard
While absolute certainty is not necessary to
establish a reasonable expectation of success, In
re O'Farrell, 853 F.2d 894, 903-04, (Fed.Cir.1988),
there can be little better evidence negating an
expectation of success than actual reports of
failure. A reasonable jury could conclude from
these reports that one of ordinary skill in the art
would not have had a reasonable expectation of
success . . . – Life Technologies, supra.
Updating Graham III
Velander v. Garner, 348 F.3d 1359 (Fed.
Cir. 2003)
How is “reasonable expectation of
success” applied?
A method for producing biocompetent
fibrinogen comprising:
providing a transgenic female nonhuman mammal carrying in its germline
heterologous DNA segments Aα, Bβ,
and γ chains of fibrinogen, wherein said
segments are expressed in a mammary
gland of said mammal and biocompetent
fibrinogen encoded by said segments is
secreted into milk of said mammal;
collecting milk from said mammal; and
recovering said biocompetent fibrinogen
from said milk.
Garner also argued that one of ordinary skill in the
art would have had a reasonable expectation of
success in producing biocompetent fibrinogen in
the milk of transgenic animals in view of the prior
art showing successful production of transgenic
animals capable of expressing heterologous
proteins in biologically active form. As support
for that proposition, Garner cited several
authorities [e.g., Greenberg et al., Expression of
Biologically Active Heterodimeric Bovine Folliclestimulating Hormone in Milk of Transgenic Mice,
88 P.N.A.S. 8327 (1991)]
Garner
The presence of a reasonable
expectation of success is measured
from the perspective of a person of
ordinary skill in the art at the time the
invention was made. Claims here were
obvious.
Updating Graham
A showing of obviousness requires [1] a
motivation or suggestion to combine or
modify prior art references, coupled with
[2] a reasonable expectation of success.
-- Brown & Williamson Tobacco Corp. v.
Philip Morris Inc., 229 F.3d 1120, 1124-25,
(Fed.Cir.2000)
Doctrine Recap
• Post-Graham: The “three-part test”
• Early Federal Circuit
– The “objective indicia” or secondary
considerations
• Recent Developments
– The ups and downs of the
“suggestion/motivation test”