Common Sense: Treating Statutory Non-Obviousness as a Novelty Issue

June 2009

By: N. Scott Pierce

Santa Clara Computer and High Technology Law Journal

The following is the abstract from the article:

Title 35 of the United States Code at § 103 limits patent protection to subject matter that would not be “obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” The requirement was introduced as a statute by the Patent Act of 1952, but, according to the legislative history, was a codification of judicial precedent. The origin of that precedent generally is attributed to the 1851 Supreme Court decision of Hotchkiss v. Greenwood. However, Hotchkiss was not widely declared a watershed moment in legal history until Cuno Engineering Corp. v. Automatic Devices Corp. ninety years later, and enactment of the Patent Act of 1952. The decision by the Supreme Court in Hotchkiss was, in fact, consistent with earlier case law developed largely by English courts, and by U.S. Supreme Court Justice Joseph Story. Until KSR International Co. v. Teleflex Inc., the Supreme Court, despite language that appears to link patentability to skill, generally maintained an underlying requirement, predating Hotchkiss, that patentable subject matter embody a new application of principle that alters the functional relationship between claimed components of statutory subject matter. Invocation of broad motivation and “common sense” by the Court in KSR to determine patentability ironically limits the capacity of reason to produce the consistent results intended by the enactment of § 103.

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June 2009

By: N. Scott Pierce

Santa Clara Computer and High Technology Law Journal

The following is the abstract from the article:

Title 35 of the United States Code at § 103 limits patent protection to subject matter that would not be “obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” The requirement was introduced as a statute by the Patent Act of 1952, but, according to the legislative history, was a codification of judicial precedent. The origin of that precedent generally is attributed to the 1851 Supreme Court decision of Hotchkiss v. Greenwood. However, Hotchkiss was not widely declared a watershed moment in legal history until Cuno Engineering Corp. v. Automatic Devices Corp. ninety years later, and enactment of the Patent Act of 1952. The decision by the Supreme Court in Hotchkiss was, in fact, consistent with earlier case law developed largely by English courts, and by U.S. Supreme Court Justice Joseph Story. Until KSR International Co. v. Teleflex Inc., the Supreme Court, despite language that appears to link patentability to skill, generally maintained an underlying requirement, predating Hotchkiss, that patentable subject matter embody a new application of principle that alters the functional relationship between claimed components of statutory subject matter. Invocation of broad motivation and “common sense” by the Court in KSR to determine patentability ironically limits the capacity of reason to produce the consistent results intended by the enactment of § 103.

To read the full article, please click on the PDF tab above.

PDF FileView as PDF

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