However, 1909 marks a significant shift in emphasis for both courts, first in the Supreme Court, then in the D.C. Circuit. They begin a concerted effort to explicitly reinforce the existence of the hindsight reconstruction problem in the “invention/obviousness” analysis. For instance, in Expanded Metal v. Bradford,33 the court said:
It is suggested that Golding's improvement, while a step forward, is nevertheless only such as a mechanic skilled in the art, with the previous inventions before him, would readily take; and that the invention is devoid of patentable novelty. It is often difficult to determine whether a given improvement is a mere mechanical advance, or the result of the exercise of the creative faculty amounting to a meritorious invention. The fact that the invention seems simple after it is made does not determine the question; if this were the rule, many of the most beneficial patents would be stricken down. It may be safely said that if those skilled in the mechanical arts are working in a given field, and have failed, after repeated efforts, to discover a certain new and useful improvement, that he who first makes the discovery has done more than make the obvious improvement which would suggest itself to a mechanic skilled in the art, and is entitled to protection as an inventor. There is nothing in the prior art that suggests the combined operation of the Golding patent in suit. It is perfectly well settled that a new combination of elements, old in themselves, but which produce a new and useful result, entitles the inventor to the protection of a patent. 34
In addition to hindsight reconstruction, the court reiterates the concepts of the Winsleau Tableau, TSM, and mechanic skilled in the art. Also notable is the recognition by the court of a link between obviousness and “invention.”
Similarly in Diamond Rubber Co. New York v. Consolidated Rubber Tire Co.35 the court focused considerable attention on hindsight reconstruction as a problem to be avoided.
It possesses such amount of change from the prior art as to have received the approval of the Patent Office, and is entitled to the presumption of invention which attaches to a patent. Its simplicity should not blind us as to its character. Many things, and the patent law abounds in illustrations, seem obvious after
v. Benedict Mfg. Co., 113 U. S. 59, 73; Thompson v. Boisselier, 114 U. S. 10, 13; Burt v. Evory, 133 U. S. 349, 358.,” In re Musgrave, 10 App.D.C. 164, (1897). “In our opinion this transfer does not rise to the dignity of invention. We repeat what we said in Potts v. Creager…,” 177 U.S. 485, 493, Mast Foos v. Stover, (1900). “[T]he applicability of the old device to the new use would occur to a person of ordinary mechanical skill, within the case of Potts v. Creager…,” Hobbs v. Beach, 180 U.S. 383, 390 (1901). “We cannot better conclude this opinion than by the following extract from the opinion of Mr. Justice Bradley in Webster Loom Co. v. Higgins…,” Carnegie Steel v. Cambria, 185 U.S. 403, 446 (1902). “We think appellant concedes this in the statement taken from his brief. In Smith v. Nichols, 21 Wall. 112, 22 L. ed. 566, it is said…,” In re Hobbs, 28 App. D. C. 525, (1907).
214 U.S. 366 (1909).
214 U.S. at 381. (citations omitted)
220 U.S. 428, (1911).