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The Origins of §103

Posted Monday, June 18, 2012 by Mike Cicero

In most situations where a patent is rejected during examination or invalidated during litigation the basis is that the invention, although different from the prior art and thus novel under 35 U.S.C. §102, is not different enough from the prior art to be considered nonobvious under 35 U.S.C §103. The nonobviousness requirement allows for the combining of multiple prior art references to reconstruct the invention and its ultimate goal is to protect that which remains in the public domain. As restated in KSR International Co. v. Teleflex, Inc. by requiring that an invention not merely be novel over the prior art but also be nonobvious in view of it, the patent system prevents the issuance and enforcement of patents that would “diminish the resources available to skillful men” by withdrawing information which is “already known into the field of its monopoly.” The policy that mere novelty is not enough for an invention to be granted a patent is an old one. In fact, it is at least 161 years old because it can be traced back to the case of Hotchkiss v. Greenwood, 52 U.S. 248 (1851).

In Hotchkiss, a suit was brought against the defendants for allegedly infringing on a patent claim directed to “the manufacturing of knobs [made] of potter’s clay, or any other kind of clay used in pottery.” The invention was novel over the prior art because knobs had apparently never been made from potter’s clay. However, the substitution of material was the extent of the inventions novelty. Knobs were well known prior to the patent and were commonly made by similar methods described in the patent using various metallic materials. The Court found that the difference between the claimed invention and the prior art merely demonstrated “judgment and skill in the selection and adaption of the materials” but that such a difference can never be the subject of a patent.

In the opinion, Justice Samuel Nelson recalled a previous case he had tried in which suit was brought for allegedly infringing on a patent for an improvement in manufacturing of buttons. The patent claimed a button comprising a wooden base covered with tin which was bent over the sides of the wooden base. Finally, holes were punched through the tin and the base for attaching the button to a garment. At the trial the defendant produced a prior art button which was identical to the patented invention except that the base was made from bone rather than wood. In that case, Nelson noted, the plaintiff gave up on the case seemingly conceding that the patent was invalid.

These represent two of the very first cases in which a claimed invention was determined to be undeserving of patent protection notwithstanding being novel over the prior art. Today, Hotchkiss is widely viewed as the foundational case for the nonobvioussness requirement and, in fact, 35 U.S.C. §103 is regarded by most as simply an attempt to codify the case law stemming from the Hotchkiss decision.

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