Utility, Novelty, Statutory Bar, & Nonobviousness

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The language in §101 permitting for patents of “new and useful” inventions means that in order to be patentable, an invention must have two elements: (i) utility, and (ii) novelty. §102 goes on to define novelty, and §103 imposes a third required element: nonobviousness.

Utility

We can think of the utility requirement as one which demands the proper response to three questions:

• Does the invention do anything?
• Does the invention work?
• Does the invention possess some moral utility?

The last of these questions seems to have become irrelevant in recent years, and so long as the patent serves some legal utility, this requirement is met. See Hornbook at 316-317. However, the invention still needs to have some ‘substantial utility,’ i.e., be useful. The Federal Circuit has said that in order for an invention to satisfy §101, it must provide some immediate benefit to the public.  See In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005).

The other questions, however, remain at the heart of the utility requirement. Unfortunately, the answers to these questions are not self-evident in some cases.

Take for example the case of the Juicy Whip “post-mix beverage dispenser” and the alleged infringement on its patent by Orange Bang, Inc. A “post-mix beverage dispenser,” apparently, is what is used to make fountain drinks at a bar. That is, water and soda syrup are stored in separate tanks and mixed as they are dispensed. “Pre-mix” beverage dispensers contain the final product already prepared in a single tank, usually on display for the customer, thereby supposedly enticing purchasers. Post-mix dispensers, however, can hold less soda and are prone to bacterial growth.

The patent at issue was for

“a post-mix beverage dispenser that is designed to look like a pre-mix beverage dispenser [and] simulates the appearance of the dispensed beverage and is resistant to bacterial growth.” -Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 1365 (Fed. Cir. 1999).

In defending the infringement suit, Orange Bang claimed that the patent held by Juicy Whip was invalid, as the invention lacked utility. The lower court agreed that

“the invention lacked utility because its purpose was to increase sales by deception, i.e., through imitation of another product.”

“threshold of utility is not high,”

So, following Juicy Whip, as long as an invention actually does something, it satisfies the utility requirement. The fact that the invention in Juicy Whip was meant to deceive did not excessively trouble the court, as the deception was not itself illegal, but merely had the capacity to fool the public.

In addition, the question of ‘does it work?’ serves to limit patentable inventions to things that are actually ‘operable.’  The classic examples of ideas that do not meet this requirement are perpetual motion machines and cold fusion devices.

Novelty

While the utility requirement for patentability is not difficult to meet, the novelty requirement is central to the concept of patents. In order to receive a patent, an invention must be new. After all, would we call something an invention if it were not new?

EXAMPLE: Joe “invents” a cup holder for cars which can be held in place by a rolled-up car window. Joe’s cup holder is identical to one already on the market. In this case, it would be odd to say that Joe has “invented” anything at all; Joe’s cup holder is nothing new.

Although the novelty requirement derives from §101, we must look to §102 in order to give context to the requirement.

• §102(a) bars patents on inventions
  

“patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;” or in a patent or patent application naming another inventor filed before the effective date.

• §102(b) says that a disclosure made one year or less before the effective filing date by the inventor or someone whom the inventor disclosed to is not considered prior art.

In short, (i) a patent, (ii) a patent application, (iii) a description in a printed publication, or (iv) an invention in use, known of in the United States, or available to the public, which pre-dates the applicant’s invention, prevents the applicant from meeting the novelty requirement.

Returning to Joe’s cup holder – if an identical cup holder has already been patented in a foreign country, Joe’s product is not novel. If an identical item was described in an Italian magazine 6 months prior to Joe’s creation, Joe’s product is not novel. Of course, this is in addition to the cup holders already being sold in the U.S. (being used) which also prevent Joe’s product from meeting the novelty requirement.

Statutory Bar (on Applications filed before March 16, 2013)

The three statutory bars to patents are found in §102(b)–(d). Each of these is designed to punish stragglers. §102(b) gives us the most important of the statutory bars, and prevents a patent from being issued if:

The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

It is easy to confuse the §102 statutory bars with the novelty requirement, but the difference lies in our perspective.

The novelty requirement, as noted above, centers on the state of affairs prior to invention. If certain conditions exist before Joe invents his cup holder, his creation will not be novel and therefore cannot be patented. The §102 statutory bars, however, look backward from the date of application rather than from the date of invention.

Under §102(b), an invention which is novel might still be unpatentable. For example, an invention which is put into use by the public might well be the first of its kind and meet the novelty requirement. A year and a day after the invention was first offered for sale, the inventor files a patent application.  §102(b) bars a patent in this case. Note, that even if nobody other than the inventor manufactures the product, the statutory bar still applies.

By operating in this way, §102(b) is intended to:

• Protect the public where extended public use of the invention, prior to applying for a patent, has led people to believe that the invention is available to all.
• Encourage prompt disclosure of new and useful information.
• Discourage inventors from manipulating the system and thereby obtaining a monopoly for a term longer than that granted by the Patent Act (i.e., an inventor would make use of the product for years prior to application, and then still hope to receive a patent granting a 20 year monopoly).

These considerations must be balanced against the goal of allowing an inventor time to perfect the invention, possibly through public testing, prior to filing a patent application. See TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965, 968 (Fed. Cir. 1984).

EXAMPLE: In January of 1987, Joe invents a useful and novel new cup holder. By the end of the year he is producing the holder in large quantities and selling them to national chain stores. In 1991, Amanda learns that Joe does not hold a patent on the holder and begins manufacturing the same item. In order to begin production, Amanda must take out a second mortgage on her home. With the profits she expects to earn, however, paying back her debt should not be a problem. If Joe is now free to receive a patent and prevent Amanda from producing the cup holders, an injustice would be done to Amanda solely due to Joe’s unreasonable delay in seeking his statutory monopoly.

But if patent law is to continue to encourage innovation, the inventor’s interests must also be considered. While the one year time limit in §102(b) might be somewhat arbitrary, it would be impossible to establish a set period of time which would be fair in all cases, and granting inventors a year to “tweak” their inventions seems to be a good compromise.

EXAMPLE: Amanda is not the only one who likes Joe’s idea, and in July of 1987 Wendy begins making cup holders identical to Joe’s. The §102(b) bar will not prevent Joe from receiving his patent if he applies later that same year. Forcing Joe to apply for a patent immediately after inventing his product is not the best way to encourage innovations of good quality.

Nonobviousness

It is easy to accidentally conflate non-obviousness and novelty. Under §103(a), no patent will issue if

“the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art….”

In other words, if the invention would be obvious to anyone involved in the same area as the inventor, there can be no statutory monopoly granted in the form of a patent.

Nutshell at 71 does a good job of distinguishing the novelty requirement from the nonobviousness requirement:

It is possible that someone skilled in the relevant field of technology and familiar with its subject matter could have invented it with comparative ease had he tried; such an “invention” would be novel but obvious to that person.

Keeping in mind the goal of encouraging innovation, there would be no need to encourage people to invent the obvious. In addition, if applications were filed for obvious inventions, the PTO would be overwhelmed by the paperwork!

Most would agree that one of the most important cases on non-obviousness is Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966). See Hornbook at 377–380; Nutshell at 74, 80. In John Deere, three cases were combined (as often happens with the Supreme Court) in which the non-obviousness requirement of §103 was in dispute.

The John Deere Court does a fine job of discussing the history of patent law, and ultimately (at pp. 14-15) holds that the rule originally formulated in Hotchkiss v. Greenwood, 52 U.S. 248 (1851) was codified by §103. In Hotchkiss, the court found that the simple substitution of clay for wood or metal in doorknobs did not rise to the level of inventiveness required by patent. Instead, the material substitution was more like the work of a skilled craftsman than that of an inventor.

The §103 test for non-obviousness under John Deere requires a three-part factual analysis:

• The scope and content of the prior art are to be determined,
• Differences between the prior art and the claims at issue are to be ascertained, and
• The level of ordinary skill in the pertinent art is to be resolved.

The Court also notes that:

"Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or non-obviousness, these inquiries may have relevancy." -John Deere at 17-18.

Other secondary considerations not mentioned in John Deere which might play a role include acquiescence (i.e., does the world treat this as a nonobvious invention?) and the presence of unexpected results. On the other hand, if the invention is created more or less simultaneously by a number of people, that would tend to indicate that the invention was in fact obvious.

EXAMPLE: Liser is a dog lover who works at a veterinarian’s office in Virginia. Recently, while washing a dog, she thought of an idea for a muzzle which would keep the dog’s jaws safely shut yet allow for full mobility of the head and neck. Phillip, who works at a veterinarian’s office in Connecticut, came up with the exact same idea just a few months ago. Deborah, who volunteers at a local dog pound, also had the same novel idea come to her just the other day. If these three inventors independently think up, and then make, muzzles which are substantially the same, the invention might be novel to each but likely will not meet the non-obviousness requirement. After all, with so many people simultaneously coming up with the same product, these are more appropriately described as cases in which people have had a “blinding flash of the obvious” than as cases in which true invention has taken place.

The Supreme Court clarified the method for determining non-obviousness in KSR v. Teleflex, 550 U.S. 398 (2007) stating that the prior art does not need to teach, suggest or motivate a combination, but that this is a useful addition to an application of the Graham factors.

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