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sufficient articulations in judicial or administrative determinations is often the source of subsequent angst. Unfortunately, when this does happen it can all too easily appear to be a failing of the test, while the test is in fact quite sound. Only the application of the test is wanting.

Early Decisions – 1850 to 1929

“Invention” Invented

The TSM test is a tool used in the “invention/obviousness” inquiry. As such, a logical point of departure for the historical journey is the creation of the “invention” requirement. Unlike the present Patent Act which requires novelty, utility, and nonobviousness,12 the Patent Act of 1836 required only novelty and utility. The third requirement, “invention,” was created in the seminal case of Hotchkiss v. Greenwood.13

No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one; or, in the sense of the patent law, can entitle the manufacturer to a patent.

The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more. 14

The TSM test is predicated on the combination of two or more prior art references. This is different from the novelty inquiry which relies on a single prior art reference. Hotchkiss not only introduces the “invention” requirement, but also implicitly acknowledges that “invention” is to be evaluated using two or more sources of prior art.

[A]s was admitted on the argument[]that knobs of metal, wood, &c., connected with a shank and spindle, in the mode and by the means used by the patentees in their manufacture, had been before known, and were in public use at the date of the patent; and hence the only novelty which could be claimed on their part was the adaptation of this old contrivance to knobs of potter's clay or

PTO as mandated by Dickinson v. Zurko, 527 U.S. 150 (1999). The burden of persuasion is something else, usually considered to be clear and convincing, when obviousness of an issued patent is reevaluated under § 103 by a trial court. For a discussion of the unfortunate tendency of courts to apply clear and convincing in a blanket fashion to all questions of patent validity including § 103 see, Lee Hollaar and John Knight, “Unclear and Unconvincing: How a misunderstanding led to the heightened evidentiary requirement in patent litigation,” http://digital-law-online.info/papers/jk/unclear.htm.

12 For an excellent description by Giles Rich of the three requirements see Application of Bergy, 596 F.2d 952, (1979).

13

52 U.S. 248 (1850).

14

52 U.S. at 266.

4

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