Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
Company, Supreme Court, 1944
The patent in suit here was for a very narrow advance in a crowded art, and covered a leak‐proof dry cell battery, where insulating material was placed around the conventional cylindrical zinc cup of a flashlight battery, and this was covered by an outside protective metal sheath that would enclose the insulated sidewalls of the zinc cup and tightly embrace both the upper and lower closures to prevent leakage of the electrolyte and depolarizing mix constituting the internal portions of the battery.
The Supreme Court held that, viewed after the event with hindsight, the invention covered by this patent may seem simple. However, the Court noted that, during the prior period of 50 years in which flashlight batteries were used, no one devised a method of curing the defect of leakage. Once the method of the patent in suit was used, it became publicly and commercially successful. The Court held that the fact of commercial success was entitled to weight in determining whether the improvement amounted to an “invention” and should, in a close case, tip the scales in favor of patentability. In this case, the leak proof battery patent was upheld as not “obvious.”
6.3.4 Cuno Engineering Corporation v. Automatic Devices Corporation, Supreme Court, 1941
This case involved a patent on the cigarette lighter commonly found in automobiles. The prior art against which the obviousness of this cigarette lighter was tested comprised two patents, one covering a wireless or cordless cigarette lighter for a car, and another covering an electric lighter for cigars and cigarettes with a thermostatic control. The device of the patent in question added to the so‐called wireless or cordless lighter a thermostatic control responsive to the temperature of the heating coil, which automatically returned the plug to its off position after the heating coil had reached a predetermined maximum temperature. The plug was then manually removed from the dashboard of the car to light the smoking material. When replaced in the socket after use, the cigarette lighter was held in an open circuit position until next needed.
The Court held that the thermostatic controls of a heating unit operating to cut off an electric current energizing the unit when its temperature had reached its desired point were well known when the patentee made his invention. The Court held that the advance of the inventor over the thermostatically controlled electric lighter was the use of the removable plug bearing the heating unit, which plug was shown in the other prior art patent to establish the automatic control circuit. The Court said the question was whether it was invention (or non‐obvious) to apply the automatic circuit of one patent to the removable heating unit in substitution for a circuit manually controlled as shown by another patent. The Court in this case held that, if an “improvement” is to obtain the privileged position of a patent, more ingenuity must be involved than the work of a mechanic skilled in the art.
The Court recognized that the principles set forth in the Hotchkiss v. Greenwood case applied to the adaptation or combination of old or well‐known devices for new uses. However, the Court went on to say that “the new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling.” In this case, the court went on to say that the patent in question did not reach this level of inventive flash of genius. The so‐called inventor merely incorporated the well‐known thermostat into the old wireless lighter to produce a more efficient, useful, and convenient article. A new application of an old device may not be patented if the result claimed as new is the same in character as the original result. The use of a thermostat to break a circuit in a “wireless” cigar lighter is analogous to, or the same in character as, the use of such a device in electric heaters, toasters, or irons, whatever may be the difference in detail of design. Ingenuity was required to effect the adaptation, but no more than that to be expected of a mechanic skilled in the art. Then, the Court went on to say, rather poetically: “Strict application of that test is necessary lest in the constant demand for new appliances the heavy hand of tribute be laid on each slight technical logical advance in an art.”
6.3.5 The Great Atlantic and Pacific Tea Company v. Supermarket Equipment Corporation, Supreme Court, 1950
The claims of the patent before the Supreme Court in this case asserted the invention of a cashiers’ counter (such as the check‐out counter in a grocery store) equipped with a three‐sided, horizontally disposed, U‐shaped frame or rack, with no top or bottom. When pushed or pulled along the top of the checkout counter, the frame moved the groceries deposited within it by a customer to the checking clerk, and left them there when pushed back to repeat the operation. I recall these devices being used in grocery stores when I was young—they have now been replaced by moving conveyor belts.
The Supreme Court noted that this device had been widely adopted and successfully used, but did it only bring old elements together? The Court held that the mere aggregation of a number of old parts or elements, which in the aggregation perform or produce no new or different function or operation than they performed individually before, is not patentable invention. The Court noted that there was no finding that the old elements that made up this device performed any additional or different function in the combination than they performed out of it. The Court stated that the three‐sided rack would draw or push goods put within it from one place to another—just what any such rack would do on any smooth surface—and the guide rails keep it from falling. The Court held that a patent for a combination that only unites old elements with no new change in their respective functions, such as presented here, obviously withdraws what technology is already known to others into the field of its monopoly and diminishes the resources available to skillful men. The Court held that the patentee had added nothing to the total stock of knowledge, but had merely brought together segments of prior art in an attempt to claim them in congregation as a monopoly.
The Court continued by saying that the framers of the Constitution plainly did not want to grant exclusive rights freely. To justify a patent, the invention had to serve the ends of science—to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. The court went on to reaffirm the “inventive genius” test for patentability as set forth in the previously mentioned Cuno Engineering case. The Supreme Court in the present case stated:
“The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end—the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.”
Thus, the Supreme Court in 1950 reinforced the “flash of genius test” as a test for patentability, thereby begging the question whether inventions that had taken a long time to develop would qualify as patentable inventions. Fortunately, this issue was directly taken up by the U.S. Congress, which passed a new patent statute in 1952, specifically overruling the Cuno Engineering case “flash of genius” test by stating that the patentability of an invention will not be negated by the manner in which the invention is made. Therefore, the “flash of genius” test is no longer applicable to determine patentability, and those inventions that resulted from dogged determination and perseverance over a period of time qualify as non‐obvious and patentable, upon meeting the other criteria of patentability—falling into a category of patentable subject matter; utility for a stated purpose; and novelty over the prior art.
6.4 THE 1952 PATENT STATUTE AND THE CASE OF GRAHAM V. JOHN DEERE COMPANY (1966)
Previously, I discussed the U.S. Patent Law of 1836, which was the basis for the existing modern patent law. In the 1836 law, the requirement of novelty was set forth in great detail; however, there was no standard of non‐obviousness written into the statute. The concept of an invention not only being novel, but also being non‐obvious to one skilled in the art, was created 170 years ago in the Supreme Court case of Hotchkiss v. Greenwood. This was the first case in which a court held that more than just novelty was required for patentability, even though the 1836 statute had specified nothing but novelty as a requirement for distinguishing over the prior art. Subsequent to the Hotchkiss case, thousands of cases were decided