Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
nitroglycerine to a useful explosive for construction purposes. After the Crimean War, in 1863, Alfred’s parents and one of his brothers, Emil, returned to Stockholm, where they worked on developing a useful form of nitroglycerine. Several explosions in their shop, including one in 1864 that killed Emil and several others, led the Stockholm city government to forbid nitroglycerine experiments within city limits. Alfred moved his experiments to a barge on Lake Mälaren, where he began to mass‐produce nitroglycerine.
Through further experimentation, he found that mixing nitroglycerine with silica would form a paste that could be molded into rods that would fit into construction drilling holes and which did not react to minor changes in temperature and pressure. He obtained a patent on this invention in 1867 (1868 in the United States), and called his product “dynamite.” He also invented and patented a detonator, or blasting cap, for the dynamite rods. Fortuitously, at the same time, the diamond drilling crown and the pneumatic drill began being used in the construction and excavating industries. The market for dynamite and detonating caps rapidly grew. His factories also developed a gelatin form of dynamite that was safe to handle.
Alfred Nobel also was a skillful entrepreneur and businessman, and eventually established factories and research facilities in 90 different locations in more than 20 countries. He made his home in Paris, though he traveled constantly. At the age of 43, he advertised for a woman to take employment as secretary and supervisor of his bachelor household. An Austrian woman, Countess Bertha Kinsky, was hired, but worked for Nobel for a very short time; she returned to Austria to marry Count Arthur von Suttner. Alfred and Bertha remained friends, and corresponded for many years. Bertha von Suttner became a leader of the anti‐armament race proliferating throughout Europe at that time, and authored a famous book, Lay Down Your Arms. Sources indicate that she influenced Alfred Nobel when he included prizes for persons or organizations promoting peace in his final will, which was signed on November 27, 1895.
In point of fact, the 1905 Nobel Peace Prize was awarded to Bertha von Suttner by the Norwegian Parliament.
Alfred Nobel died at his home in San Remo, Italy, on December 10, 1896, but that was not the end of his influence on humanity. When his will was opened, those who knew him, and particularly his relatives, were surprised to learn he had left the bulk of his sizeable fortune to establish an invested fund. The interest of the fund was to be distributed in the form of prizes in the categories of physics, chemistry, physiology or medicine, literature, and peace “to those who, during the preceding year, shall have conferred the greatest benefit on mankind.” The paragraph from his will establishing the Nobel Prizes is reprinted on page 102.
The executors of his will, two young engineers, Rudolf Lilljequist and Rognar Sohlman, formed the Nobel Foundation to accomplish Nobel’s lofty purposes. These young men successfully battled Alfred Nobel’s relatives and the authorities in several countries who challenged and questioned the will. Upon successfully battling the opposition, the first Nobel Prizes were awarded in 1901.
6 Requirement of Non‐Obviousness for Patentability
6.1 DEVELOPMENT OF THE STANDARD OF NON‐OBVIOUSNESS
The preceding chapters were, in part, directed toward the requirement that an invention must be “novel” in order to be patentable, and must be a “patent‐eligible” invention. These represent threshold hurdles to overcome—however, establishing novelty alone does not automatically establish that your invention is patentable relative to the prior art. Thus, after it is established that the claimed invention differs structurally or functionally, or both, from the prior art, which means that the patent claim does not read literally on a single item of prior art, Section 103 of the U.S. Patent Statute (35 U.S.C. §103) becomes applicable. Section 103 requires that the claimed invention as a whole also be non‐obvious at the time of the effective filing date of the patent application claiming the invention to a hypothetical “person having ordinary skill in the art to which the subject matter of the patented invention pertains.” This condition deals with the level or degree of “invention,” or “inventive step,” required to obtain a patent. Thus, the non‐obviousness requirement comes into play only when the claimed invention is not identically disclosed or described in the prior art as set forth in Section 102 of the patent statute, the latter which determines novelty. If the claimed invention is not novel, it is identically described in the prior art, falling under one of the subsections of Section 102. If this occurs, no valid patent is possible, and the question of patentability is ended.
However, where the claimed invention is not identically described in any single prior art disclosure, there is then the hurdle of non‐obviousness that must be overcome to obtain a patent. The question becomes: does the invention for which you seek to obtain a patent represent sufficient innovation, or non‐obviousness, over the prior art to support the grant of a patent?
6.2 HISTORICAL BACKGROUND
The first U.S. Patent Act in 1790 provided for the issuance of patents by the Secretaries of State, the Department of War, or the Attorney General, or any two of them, who should deem the invention or discovery sufficiently useful or important. After 3 years, the Patent Act of 1793 eliminated altogether the examination procedure in the grant of patents. However, the language regarding “useful” and “important” as to patents did reappear in the patent statute of 1836, which also reinstituted the patent examination process. This language was also included in all patent acts preceding the 1952 Patent Act, which is primarily the law in operation today, with periodic amendments. The latest major amendment was the AIA enacted in 2011.
Apparently, the fact that an invention had to be both useful and important was universally ignored by the U.S. courts prior to 1952. However, in dealing with patents, the courts did institute certain criteria for innovation above and beyond the test of novelty. Thus, case law began to develop around this test of “importance” of the invention. The various cases decided by the several courts set forth a great variety of definitions relating to the requirement for innovation, in addition to novelty, to support patentability. The question always has been, and still is, to determine whether a novel invention is a sufficient advance in the art that its disclosure to the public warrants granting the right to exclude others from use of the invention for a limited time period. This is the statement of the law as it exists today, and the answer to this question lies in the analysis of the technological advance of the particular invention over the content of the prior art.
The requirement that the subject matter of a patent grant be non‐obvious was first embodied in statutory form in the 1952 Patent Act in Section 103, which stated:
Conditions for Patentability: Non‐Obvious Subject Matter
“A patent may not be obtained though the invention is not identically disclosed or described as set forth in Section 102 of this title (novelty requirements), 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. The patentability shall not be negatived by the manner in which the invention was made.…”
The AIA made a change to Section 103 as follows:
“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed