B.Obviousness Test

Graham v.John Deere Co.of Kansas City

United States Surpreme Court,1966

383 U.S.1

MR.JUSTICE CLARK delivered the opinion of the Court.

After a lapse of 15 years,the Court again focuses its attention on the patentability of inventions under the standard of Art.I,§ 8,cl.8,of the Constitution and under the conditions prescribed by the laws of the United States.Since our last expression on patent validity,… the Congress has,for the first time,expressly added a third statutory dimension to the two requirements of novelty and utility that had been the sole statutory test since the Patent Act of 1793.This is the test of obviousness,i.e.,whether“the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.Patentability shall not be negatived by the manner in which the invention was made.”§ 103 of the Patent Act of 1952,35 U.S.C.§ 103(1964 ed.).

I

[This case,] an infringement suit by petitioners,presents a conflict between two Circuits over the validity of a single patent on a“Clamp for vibrating Shank Plows.”The invention,a combination of old mechanical elements,involves a device designed to absorb shock from plow shanks as they plow through rocky soil,and thus to prevent damage to the plow.In 1955,the Fifth Circuit had held the patent valid under its rule that,when a combination produces an“old result in a cheaper and otherwise more advantageous way,”it is patentable.In 1964,the Eighth Circuit held,in the case at bar,that there was no new result in the patented combination,and that the patent was therefore not valid.Although we have determined that neither Circuit applied the correct test,we conclude that the patent is invalid under § 103,and therefore we affirm the judgment of the Eighth Circuit.

II

At the outset,it must be remembered that the federal patent power stems from a specific constitutional provision which authorizes the Congress“To promote the Progress of … useful Arts,by securing for limited Times to … Inventors the exclusive Right to their … Discoveries.”Art.I,§ 8,cl.8.The clause is both a grant of power and a limitation.This qualified authority,unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown,is limited to the promotion of advances in the“useful arts.”It was written against the backdrop of the practices – eventually curtailed by the Statute of Monopolies – of the Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public.The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose.Nor may it enlarge the patent monopoly without regard to the innovation,advancement or social benefit gained thereby.Moreover,Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain,or to restrict free access to materials already available.Innovation,advancement,and things which add to the sum of useful knowledge are inherent requisites in a patent system which,by constitutional command,must“promote the Progress of … useful Arts.”This is the standard expressed in the Constitution,and it may not be ignored.And it is in this light that patent validity“requires reference to a standard written into the Constitution.”

Thomas Jefferson,who as Secretary of State …,was [the] moving spirit,and might well be called the“first administrator of our patent system.”He was not only an administrator of the patent system under the 1790 Act,but was also the author of the 1793 Patent Act.In addition,Jefferson was himself an inventor of great note.His unpatented improvements on plows,to mention but one line of his inventions,won acclaim and recognition on both sides of the Atlantic.Because of his active interest and influence in the early development of the patent system,Jefferson’s views on the general nature of the limited patent monopoly under the Constitution,as well as his conclusions as to conditions for patentability under the statutory scheme,are worthy of note.

Jefferson,like other Americans,had an instinctive aversion to monopolies.It was a monopoly on tea that sparked the Revolution,and Jefferson certainly did not favor an equivalent form of monopoly under the new government.His abhorrence of monopoly extended initially to patents as well.From France,he wrote to Madison (July,1788) urging a Bill of Rights provision restricting monopoly,and as against the argument that limited monopoly might serve to incite“ingenuity,”he argued forcefully that“the benefit even of limited monopolies is too doubtful to be opposed to that of their general suppression,”V Writings of Thomas Jefferson at 47 (Ford ed.,1895).

Jefferson’s philosophy on the nature and purpose of the patent monopoly is expressed in a letter to Isaac McPherson (Aug.,1813),a portion of which we set out in the margin.He rejected a natural rights theory in intellectual property rights and clearly recognized the social and economic rationale of the patent system.The patent monopoly was not designed to secure to the inventor his natural right in his discoveries.Rather,it was a reward,an inducement,to bring forth new knowledge.The grant of an exclusive right to an invention was the creation of society – at odds with the inherent free nature of disclosed ideas – and was not to be freely given.Only inventions and discoveries which furthered human knowledge,and were new and useful,justified the special inducement of a limited private monopoly.Jefferson did not believe in granting patents for small details,obvious improvements,or frivolous devices.His writings evidence his insistence upon a high level of patentability.

As a member of the patent board for several years,Jefferson saw clearly the difficulty in“drawing a line between the things which are worth to the public the embarrassment of an exclusive patent,and those which are not.”The board on which he served sought to draw such a line and formulated several rules which are preserved in Jefferson’s correspondence.Despite the board’s efforts,Jefferson saw“with what slow progress a system of general rules could be matured.”

Apparently Congress agreed with Jefferson and the board that the courts should develop additional conditions for patentability.Although the Patent Act was amended,revised or codified some 50 times between 1790 and 1950,Congress steered clear of a statutory set of requirements other than the bare novelty and utility tests reformulated in Jefferson’s draft of the 1793 Patent Act.

III

The difficulty of formulating conditions for patentability was heightened by the generality of the constitutional grant and the statutes implementing it,together with the underlying policy of the patent system that“the things which are worth to the public the embarrassment of an exclusive patent,”as Jefferson put it,must outweigh the restrictive effect of the limited patent monopoly.The inherent problem was to develop some means of weeding out those inventions which would not be disclosed or devised but for the inducement of a patent.

IV

The 1952 Patent Act

The Act sets out the conditions of patentability in three sections.An analysis of the structure of these three sections indicates that patentability is dependent upon three explicit conditions: novelty and utility,as articulated and defined in §101 and § 102,and nonobviousness,the new statutory formulation,as set out in§ 103.The first two sections,which trace closely the 1874 codification,express the“new and useful”tests which have always existed in the statutory scheme and,for our purposes here,need no clarification.The pivotal section around which the present controversy centers is § 103.It provides:

§ 103.Conditions for patentability; non-obvious subject matter

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title,if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.Patentability shall not be negatived by the manner in which the invention was made.

The section is cast in relatively unambiguous terms.Patentability is to depend,in addition to novelty and utility,upon the“non-obvious”nature of the“subject matter sought to be patented”to a person having ordinary skill in the pertinent art.

Section 103,for the first time in our statute,provides a condition which exists in the law and has existed for more than 100 years,but only by reason of decisions of the courts.An invention which has been made,and which is new in the sense that the same thing has not been made before,may still not be patentable if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent.That has been expressed in a large variety of ways in decisions of the courts and in writings.Section 103 states this requirement in the title.It refers to the difference between the subject matter sought to be patented and the prior art,meaning what was known before as described in section 102.If this difference is such that the subject matter as a whole would have been obvious at the time to a person skilled in the art,then the subject matter cannot be patented.

We believe that [the] legislative history,as well as other sources,show that the revision was not intended by Congress to change the general level of patentable invention.We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition,with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.

V

Approached in this light,the § 103 additional condition,when followed realistically,will permit a more practical test of patentability.The emphasis on non-obviousness is one of inquiry,not quality,and,as such,comports with the constitutional strictures.

While the ultimate question of patent validity is one of law,the § 103 condition,which is but one of three conditions,each of which must be satisfied,lends itself to several basic factual inquiries.Under § 103,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 resolved.Against this background,the obviousness or nonobviousness of the subject matter is determined.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 nonobviousness,these inquiries may have relevancy.

This is not to say,however,that there will not be difficulties in applying the nonobviousness test.What is obvious is not a question upon which there is likely to be uniformity of thought in every given factual context.The difficulties,however,are comparable to those encountered daily by the courts in such frames of reference as negligence and scienter,and should be amenable to a case-by-case development.We believe that strict observance of the requirements laid down here will result in that uniformity and definiteness which Congress called for in the 1952 Act.

VI

We now turn to the application of the conditions found necessary for patentability to the cases involved here:

A.The Patent in Issue in No.11,Graham v.John Deere Co.

This patent,No.2,627,798 (hereinafter called the ’798 patent) relates to a spring clamp which permits plow shanks to be pushed upward when they hit obstructions in the soil,and then springs the shanks back into normal position when the obstruction is passed over.The device,which we show diagrammatically in the accompanying sketches (Appendix,Fig.1),is fixed to the plow frame as a unit.The mechanism around which the controversy centers is basically a hinge.The top half of it,known as the upper plate (marked 1 in the sketches),is a heavy metal piece clamped to the plow frame (2),and is stationary relative to the plow frame.The lower half of the hinge,known as the hinge plate (3),is connected to the rear of the upper plate by a hinge pin (4) and rotates downward with respect to it.The shank (5),which is bolted to the forward end of the hinge plate (at 6),runs beneath the plate and parallel to it for about nine inches,passes through a stirrup (7),and then continues backward for several feet curving down toward the ground.The chisel (8),which does the actual plowing,is attached to the rear end of the shank.As the plow frame is pulled forward,the chisel rips through the soil,thereby plowing it.In the normal position,the hinge plate and the shank are kept tight against the upper plate by a spring (9),which is atop the upper plate.A rod(10) runs through the center of the spring,extending down through holes in both plates and the shank.Its upper end is bolted to the top of the spring,while its lower end is hooked against the underside of the shank.

When the chisel hits a rock or other obstruction in the soil,the obstruction forces the chisel and the rear portion of the shank to move upward.The shank is pivoted (at 11) against the rear of the hinge plate,and pries open the hinge against the closing tendency of the spring.(See sketch labeled“Open Position,”Appendix,Fig.1.) This closing tendency is caused by the fact that,as the hinge is opened,the connecting rod is pulled downward and the spring is compressed.When the obstruction is passed over,the upward force on the chisel disappears,and the spring pulls the shank and hinge plate back into their original position.The lower,rear portion of the hinge plate is constructed in the form of a stirrup (7)which brackets the shank,passing around and beneath it.The shank fits loosely into the stirrup (permitting a slight up and down play).The stirrup is designed to prevent the shank from recoiling away from the hinge plate,and thus prevents excessive strain on the shank near its bolted connection.The stirrup also girds the shank,preventing it from fishtailing from side to side.

In practical use,a number of spring-hinge-shank combinations are clamped to a plow frame,forming a set of ground-working chisels capable of withstanding the shock of rocks and other obstructions in the soil without breaking the shanks.

Background of the Patent

Chisel plows,as they are called,were developed for plowing in areas where the ground is relatively free from rocks or stones.Originally,the shanks were rigidly attached to the plow frames.When such plows were used in the rocky,glacial soils of some of the Northern States,they were found to have serious defects.As the chisels hit buried rocks,a vibratory motion was set up and tremendous forces were transmitted to the shank near its connection to the frame.The shanks would break.Graham,one of the petitioners,sought to meet that problem,and,in 1950,obtained a patent,U.S.No.2,493,811 (hereinafter ’811),on a spring clamp which solved some of the difficulties.Graham and his companies manufactured and sold the ’811 clamps.In 1950,Graham modified the ’811 structure and filed for a patent.That patent,the one in issue,was granted in 1953.This suit against competing plow manufacturers resulted from charges by petitioners that several of respondents’ devices infringed the ’798 patent.

The Prior Art

Five prior patents indicating the state of the art were cited by the Patent Office in the prosecution of the ’798 application.Four of these patents,10 other United States patents,and two prior-use spring-clamp arrangements not of record in the ’798 file wrapper were relied upon by respondents as revealing the prior art.The District Court and the Court of Appeals found that the prior art“as a whole in one form or another contains all of the mechanical elements of the ’798 Patent.”One of the prior-use clamp devices not before the Patent Examiner – Glencoe –was found to have“all of the elements.”

We confine our discussion to the prior patent of Graham,’811,and to the Glencoe clamp device,both among the references asserted by respondents.The Graham ’811 and ’798 patent devices are similar in all elements,save two: (1)the stirrup and the bolted connection of the shank to the hinge plate do not appear in ’811; and (2) the position of the shank is reversed,being placed in patent ’811 above the hinge plate,sandwiched between it and the upper plate.The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank.Other differences are of no consequence to our examination.In practice,the ’811 patent arrangement permitted the shank to wobble or fishtail,because it was not rigidly fixed to the hinge plate; moreover,as the hinge plate was below the shank,the latter caused wear on the upper plate,a member difficult to repair or replace.

Graham’s ’798 patent application contained 12 claims.All were rejected as not distinguished from the Graham ’811 patent.The inverted position of the shank was specifically rejected,as was the bolting of the shank to the hinge plate.The Patent Office examiner found these to be“matters of design well within the expected skill of the art and devoid of invention.”Graham withdrew the original claims and substituted the two new ones which are substantially those in issue here.His contention was that wear was reduced in patent ’798 between the shank and the heel or rear of the upper plate.[1]3 He also emphasized several new features,the relevant one here being that the bolt used to connect the hinge plate and shank maintained the upper face of the shank in continuing and constant contact with the underface of the hinge plate.

Graham did not urge before the Patent Office the greater“flexing”qualities of the ’798 patent arrangement which he so heavily relied on in the courts.The sole element in patent ’798 which petitioners argue before us is the interchanging of the shank and hinge plate and the consequences flowing from this arrangement.The contention is that this arrangement – which petitioners claim is not disclosed in the prior art – permits the shank to flex under stress for its entire length.As we have sketched (see sketch,“Graham ’798 Patent”in Appendix,Fig.2),when the chisel hits an obstruction,the resultant force (A) pushes the rear of the shank upward and the shank pivots against the rear of the hinge plate at (C).The natural tendency is for that portion of the shank between the pivot point and the bolted connection (i.e.,between C and D) to bow downward and away from the hinge plate.The maximum distance (B) that the shank moves away from the plate is slight – for emphasis,greatly exaggerated in the sketches.This is so because of the strength of the shank and the short – nine inches or so – length of that portion of the shank between (C) and (D).On the contrary,in patent ’811 (see sketch,“Graham ’811 Patent”in Appendix,Fig.2),the pivot point is the upper plate at point (c); and while the tendency for the shank to bow between points (c) and (d)is the same as in ’798,the shank is restricted because of the underlying hinge plate and cannot flex as freely.In practical effect,the shank flexes only between points(a) and (c),and not along the entire length of the shank,as in ’798.Petitioners say that this difference in flex,though small,effectively absorbs the tremendous forces of the shock of obstructions,whereas prior art arrangements failed.

The Obviousness of the Differences

We cannot agree with petitioners.We assume that the prior art does not disclose such an arrangement as petitioners claim in patent ’798.Still we do not believe that the argument on which petitioners’ contention is bottomed supports the validity of the patent.The tendency of the shank to flex is the same in all cases.If free-flexing,as petitioners now argue,is the crucial difference above the prior art,then it appears evident that the desired result would be obtainable by not boxing the shank within the confines of the hinge.The only other effective place available in the arrangement was to attach it below the hinge plate and run it through a stirrup or bracket that would not disturb its flexing qualities.Certainly a person having ordinary skill in the prior art,given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank,would immediately see that the thing to do was what Graham did,i.e.,invert the shank and the hinge plate.

Petitioners’ argument basing validity on the free-flex theory,raised for the first time on appeal,is reminiscent of Lincoln Engineering Co.of Illinois v.Stewart-Warner Corp.(1938),where the Court called such an effort“an afterthought.No such function … is hinted at in the specifications of the patent.If this were so vital an element in the functioning of the apparatus,it is strange that all mention of it was omitted.”No“flexing”argument was raised in the Patent Office.Indeed,the trial judge specifically found that“flexing is not a claim of the patent in suit …,”and would not permit interrogation as to flexing in the accused devices.Moreover,the clear testimony of petitioners’ experts shows that the flexing advantages flowing from the ’798 arrangement are not,in fact,a significant feature in the patent.

We find no nonobvious facets in the ’798 arrangement.The wear and repair claims were sufficient to overcome the patent examiner’s original conclusions as to the validity of the patent.However,some of the prior art,notably Glencoe,was not before him.There the hinge plate is below the shank,but,as the courts below found,all of the elements in the ’798 patent are present in the Glencoe structure.Furthermore,even though the position of the shank and hinge plate appears reversed in Glencoe,the mechanical operation is identical.The shank there pivots about the underside of the stirrup,which in Glencoe is above the shank.In other words,the stirrup in Glencoe serves exactly the same function as the heel of the hinge plate in ’798.The mere shifting of the wear point to the heel of the ’798 hinge plate from the stirrup of Glencoe – itself a part of the hinge plate – presents no operative mechanical distinctions,much less nonobvious differences.

The judgment of the Court of Appeals in No.11 is affirmed.

Appendix to the Court’s Opinion