Chapter 7

Nonobviousness: Case Studies

Hotchkiss

Hotchkiss

Hotchkiss• The Court holds that:

– “[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.”

• Is this different from an “obviousness” standard?

The Graham-Hoeme Chisel Plow

• It was designed by Fred Hoeme to leave large clods of soil resistant to wind erosion.

• Three narrow patents were issued in 1936, within twelve months of application.

• Hoeme manufactured approx. 2000 plows before 1939.• At least one other competitor (Jeoffroy) marketed similar

plows. • 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.

Figure 1: The Hoeme Cultivator

Hoeme’s Clamp (1935)

• 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 the soil is largely free of rocks.

• When Graham began selling the plow in northern states, rocks in the soil caused damage not only to the plow bit, shank, clamp and even the lower flange of the I-beams.

• I-beam damage was particularly troubling because it destroyed the value of the whole plow frame.

Hoeme’s Original Clamp (1935)

I Beam (Plow Frame)

Plow Shank

Plow Chisel

Clamp

Clamping Screw

Threaded Hole

Graham’s First Solution: The Simple Brace Clamp

• Graham substituted a reinforced “brace clamp” that would more evenly distribute the forces of rock collisions across the entire I-beam.

• Patent sought in 1946 and issued in 1949.• Practical Problem: While this brace tended to protect the

lower flange of the I-beam, it did nothing to protect the chisel and the shank.– The chisel and shank would fail more rather than less

frequently because the clamp was more rigid.• Legal Problem: The clamp was so simple the courts

quickly held the patent invalid for obviousness Graham v. Jeoffroy Mfg. (5th Cir. 1953).

Graham’s First Improved Clamp: The Brace Clamp (1946)

The added brace (13) distributes the forces from the plow shank (in red) toward the upper portion of the I-beam (10) and thereby protects the lower flange of the I-beam (10a).

Graham’s ’811 Spring Clamp (1947)

• Graham had more success in his second attempt to invent a clamp for rocky fields.

• Rather than making his clamp more rigid, he create a spring mounting so 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 enhanced the desirable vibratory action, which created alternating pockets and ridges capable of storing moisture for sustaining crops during dry periods.

Graham’s ’811 Spring Clamp (1947)

The plow shank (in red) is sandwiched between the pivoted hinge plate (in green) and the fixed upper plate attached to the I-beam frame. The spring and rod (66 & 71) at the front end of the clamp applies upward pressure against the front of the hinge plate. Shank is held solely by spring rod.

Graham’s ’811 Spring Clamp (disassembled)

The spring rod (71) is passed through the slot (70) to secure the shank (in red). The shank’s motion causes wear on the spring rod and the underside of the clamp’s fixed upper plate near the pivot (61).

Prior Art: “Spring Tooth for Cultivators” (1893)

Graham’s ’811 Patent

• Application filed in Feb. 1947; issued Jan. 1950.• 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, and did not receive, a

broad patent.• The ’811 patent was sustained as nonobvious. As the

Fifth Circuit said, the ’811 patent covered “a meritorious, yet not an outright pioneer invention.”

• The Fifth Circuit refused to give a broad application to the ’811 patent under the doctrine of equivalents.

Graham’s ’811 Spring Clamp

• Graham began marketing the clamp in the late 1940s and continued producing it, with some modifications, for at least a decade and a half.

• Some flaws became apparent with the design over time:– Damage to Upper Plate: The shank rubbed

against the fixed upper plate of the clamp. The upper plate was expensive to replace because it was a large piece and was connected directly to the frame of the plow.

– Damage to the Spring Rod: The spring rod passed through a slot in the shank and was the only part holding the shank within the clamp. As the shank pivoted under strain, it would slide against and damage the spring rod.

Graham’s ’798 Spring Clamp (1950/51) (assembled and disassembled views)

The hinge plate (green) has been moved above the shank (red) so that the shank does not touch the fixed upper plate (13). Also a stirrup (57) near the pivot and a bolt (56, with nuts 56’ and 56”) have been added to secure the shank to the hinge plate.

Graham’s ’798 Patent• This is the patent at issue in the suit against John Deere.• Wear against the upper plate and spring rod provided

impetus for modifying the clamp. (Graham’s testimony)• Changes in the clamp:

– Hinge plate has been moved above the shank so that the shank does not touch 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 his application until August 27, 1951.

• Graham never marketed this clamp, and never even produced one until Deere litigation.

Prosecution of the ’798 Patent

• Examiner first found that the two modifications produced “no new or unexpected result” and concluded that they were “matters of design well within the expected skill of the art and devoid of invention.”

• Graham came back with arguments as to why the new arrangement showed a “new or unexpected” result.– His arguments centered around how the changes

eliminated the problem of excessive wear on the hard-to-replace upper plate.

– The stirrup and bolt, Graham argued, maintained the shank “in constant continuous contact” with the hinge plate. The claims were changed to reflect this limitation.

• Examiner allowed the patent to be issued with two claims in February of 1953.

Problems with the ’798 Patent

• The patent examiner accepted Graham’s arguments in June 1952, just prior to the enactment of Section 103.

• The patent office did not have all of the relevant prior art before it.– In May 1951, Elmer Rolf of Glencoe Manufacturing

reduced to practice a spring clamp highly similar to the Graham ’798 device.

• Because the Glencoe device achieved the wear-reducing and ease-of-replacement goals touted by Graham, Graham needed to develop a wholly new theory in the John Deere litigation to distinguish his clamp from Glencoe’s.

The Rolf/Glencoe Spring Clamp (RTP May, 1951)

The hinge plate (green) isolates the shank (red) from the fixed upper plate of the clamp. The hinge plate also includes a stirrup (29) and screw plus hole (32 & 31) for securing the shank against the hinge plate.

Overall Timeline of Events

• June 1,1935: Fred Hoeme applies for a patent for his cultivator.

• January 28, 1936: Narrow patents issues on Hoeme Cultivator.

• 1939: Hoeme sells his inventions to William T Graham for $38,000.

• July 1, 1946: Graham applies for his first patent on a brace clamp.

• February 26, 1947: Graham applies for patent on a spring clamp.

• March 15, 1949: Graham receives a patent on his brace clamp.

• January 10, 1950: ’811 patent issued to Graham for a spring clamp.

• March, 1950: Graham conceives of design for an improved spring clamp.

– May, 1951: Rolf/Glencoe begin marketing its spring clamp.

• August 27, 1951: Graham applies for patent on improved spring clamp.

– April 19, 1952: Rolf/Glencoe applies for a patent on its spring clamp.

• February 10, 1953: Graham receives ’798 patent for improved spring clamp.

– March 4, 1954: Examiner notifies Glencoe of the Graham patent and concludes that it would “not require invention to reverse the position of [the hinge plate].” No interference declared.

– September, 1954: Rolf and Glencoe submit evidence showing RTP and sales in May, 1951.

– Examiner allows Glencoe patent in August of 1955; it issues March 27, 1956.

The Court’s Treatment• The Court recognizes that “[t]he wear and repair claims

were sufficient to overcome the patent examiner’s original conclusions as to the validity of the patent,” but all of these features “are present in the Glencoe structure,” in which “the mechanical operation is identical.”

• The flexing feature of the Graham 798 device is an “afterthought” that was not “hinted at in the specifications of the patent” or “raised in the Patent Office.”– Is there a requirement to identify the nonobvious

quality?

• The Court also notes that Graham’s own expert had testified that “the flexing advantages … are not, in fact, a significant feature in the patent.”

Calmar v. Cook Chemical• As in Graham,the Patent Office did not consider the most

relevant prior art (the Livingstone patent). – Livingstone is 102(e) type prior art. The patent

application was filed in 1953, and Livingstone did not claim the relevant features of the cap.

– Livingstone was not granted until August 16, 1955. Thus, Cook’s researcher (Scoggin) could not have known about this cap for most of the period when he was searching for a better hold-down cap.

• Cook Chemical argued that its cap was distinguished by two differences: – A space between the hold-down cap and the shoulder of

the container top. – The use of a rib seal rather than just a gasket.

Cook Chemical: Livingstone Patent

Gap between hold-down cap and container top.

Tongue-and-groove seal (equivalent to rib seal)

Calmar v. Cook Chemical• As to difference 1, the Court notes:

– the space so strongly asserted by Cook Chemical appears quite plainly on the Livingstone device, a reference not cited by the Examiner.

• As to difference 2, the Court notes that the rib was essentially identical to the tongue-and-groove seal shown in Livingstone. – Livingstone uses a tongue and groove technique ….

Scoggin employed the rib and shoulder seal in the identical position and with less efficiency because the Livingstone technique is inherently a more stable structure …. Indeed, Cook Chemical has now incorporated the Livingstone closure into its own shipper-sprayers as had Calmar in [its allegedly infringing product.

– In fact Cook had to argue that a tongue seal was equivalent to a rib seal in order to bring its infringement case.

Calmar v. Cook Chemical• Cook’s only hope was to have the Livingstone

patent excluded from the “pertinent” prior art on the ground that it was a cap for a pour spout not a sprayer top.

• Court rejects this weak argument: – Cook Chemical argues, however, that Livingstone is not

in the pertinent prior art because it relates to liquid containers having pouring spouts rather than pump sprayers. Apart from the fact that respondent made no such objection to similar references cited by the Examiner, so restricted a view of the applicable prior art is not justified. The problems confronting Scoggin and the insecticide industry were not insecticide problems; they were mechanical closure problems. Closure devices in such a closely related art as pouring spouts for liquid containers are at the very least pertinent references.

Calmar v. Cook Chemical• While obviousness is tested from the perspective of the

person of ordinary skill in the art, it is tested against all of the relevant prior art.

• As Judge Rich describes it in Winslow just a few months after Graham was decided, the section 103 test hypothesizes a person skilled in the art “working in his shop with the prior art references — which he is presumed to know — hanging on the walls around him.”

• The test thus is very stringent in terms of knowledge; the person of skill in the art is presumed to have perfect knowledge of the whole tableau of pertinent references. But, unlike the pre-1952 standard, the test is forgiving as to the standard of effort and creativity necessary to achieve patentability: If the person of skill in the art would not find the invention “obvious,” then it is patentable even if the person of skill in the art could have come up with the invention with only a modest amount of effort and ingenuity.

Calmar v. Cook Chemical• In the Cook Chemical case, the tableau of relevant references includes a

piece of “secret” prior art – the Livingstone patent application, which was filed in 1953 but did not issue until August of 1955.

• The case thus shows that the obviousness test uses a hypothetical person of ordinary skill in the art (POSITA) who possesses more knowledge than ordinary researchers in the real world.

• The existence of secret prior art also helps to explain why Cook Chemical could make a good showing on the “secondary factors” of nonobviousness but still fail the legal test: Real world researchers at Cook Chemical and other insecticide firms did not have access to the Livingstone patent application during 1953-1955, which is when the need existed and remained unsolved.

• In explaining the failure of Scoggin and others to hit upon the “obvious” variation of Livingstone’s cap, the Supreme Court suggests that Scoggin and other researchers can be faulted because “no one apparently chose to avail himself of knowledge stored in the Patent Office and readily available by the simple expedient of conducting a patent search — a prudent and nowadays common preliminary to well organized research.” But this isn’t correct, because a patent search would not have uncovered Livingstone’s patent until late in 1955. Scoggin started his research in 1954.

United States v. Adams• This is really an obvious case of nonobviousness.• The Court noted (among other things):

– “The court below found, and the Government apparently admits, that the Adams battery “wholly unexpectedly” has shown “certain valuable operating advantages over other batteries” while those from which it is claimed to have been copied were long ago discarded.”

• The govt’s own lawyers did not seem to believe their argument: The government’s argument in the merits brief is only eight and a half pages long, with more than half of that space being devoted to the argument that the Adams battery was not novel — a position the government had conceded away in its petition!

Federal Circuit’s Suggestion Test• Designed to guard against “hindsight” reasoning.• Dembiczak holds that the courts must adhere to a “rigorous

application of the requirement for a showing of the teaching or motivation to combine prior art references.”

• Other cases require evidence of teaching or suggestion “essential” to avoid hindsight reasoning.

• But…• Dembiczak also states that the required suggestion “may

flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved…” – Thus, a suggestion may be implicit, not explicit, in the

art. – When is a suggestion implicit? When it is obvious?

Federal Circuit’s Suggestion Test• Implicit suggestions are the most interesting set of

cases. A good example is on page 805-06: In re Paulsen, 30 F.3d 1475, 31 U.S.P.Q.2d (BNA) 1671 (Fed. Cir. 1994), which involved a patent on essentially all “laptop-style” computers, i.e., computers having a visual display connected by a hinge to the keyboard base of the machine.

• The court found an implicit suggestions in pertinent prior art, including “hinges and latches as used in a desktop telephone directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a wooden furniture cabinet, or a two-part housing for storing audio cassettes.”

Dembiczak (Pumpkin Bags)• Patent Claim: • 74. A decorative bag for use by a user with trash filling

material, the bag simulating the general outer appearance of an outer surface of a pumpkin having facial indicia thereon, comprising:

• a flexible waterproof plastic trash or leaf bag having • an outer surface which is premanufactured orange in color for

the user to simulate the general appearance of the outer skin of a pumpkin, and having

• facial indicia including at least two of an eye, a nose and a mouth on the orange color outer surface for forming a face pattern on said orange color outer surface to simulate the general outer appearance of a decorative pumpkin with a face thereon,

• said trash or leaf bag having first and second opposite ends, at least said second end having an opening extending substantially across the full width of said trash or leaf bag for receiving the trash filling material,

• wherein when said trash or leaf bag is filled with trash filling material and closed, said trash or leaf bag takes the form and general appearance of a pumpkin with a face thereon.

Dembiczak (Pumpkin Bags)

Dembiczak (Pumpkin Bags)• The prior art cited by the Board includes:• [1] pages 24-25 of a book entitled “A Handbook for

Teachers of Elementary Art,” by Holiday Art Activities ("Holiday"), describing how to teach children to make a “Crepe Paper Jack-O-Lantern” out of a strip of orange crepe paper, construction paper cut-outs in the shape of facial features, and “wadded newspapers” as filling;

• [2] page 73 of a book entitled “The Everything Book for Teachers of Young Children,” by Martha Shapiro and Valerie Indenbaum (“Shapiro”), describing a method of making a “paper bag pumpkin” by stuffing a bag with newspapers, painting it orange, and then painting on facial features with black paint;

• [3] U.S. Patent No. 3,349,991 to Leonard Kessler, entitled “Flexible Container” (“Kessler”), describing a bag apparatus wherein the bag closure is accomplished by the use of folds or gussets in the bag material;

• [4] Prior art “conventional” plastic lawn or trash bags (“the conventional trash bags”).