by Dennis Crouch
The pending obviousness petition in Vanda v. Teva has prompted me to look back on some of the key Supreme Court cases cited in the briefs. Last week, I wrote about Atlantic Works v. Brady, 107 U.S. 192 (1883) in a blog post titled The Quest for a Meaningful Threshold of Invention. Today, I’m looking at Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320 (1945), an obviousness case decided just a few years before a rewriting of the 1952 Patent Act. At the time, the doctrine was identified as “want of invention,” but the court’s analysis is familiar to anyone practicing patent law today.
Background on the Invention
The challenged patent was U.S. Patent No. 1,877,504, issued to Dow Chemical employees John Grebe and Ross Sanford on September 12, 1932. US1877504. As you might guess from the parties, the patent involves a method of increasing the output of an oil well.
The key idea was to pump hydrochloric acid into the well to dissolve some of the surrounding limestone rock, opening up channels for more oil to flow into the well. This basic concept of “acidizing” oil wells was not new – it originated in an 1896 patent issued to Herman Frasch. Frasch’s method involved pumping concentrated hydrochloric acid (30-40% HCl) into the well under pressure. However, a major issue with Frasch’s technique was that the strong acid would severely corrode the metal well equipment. Frasch suggested using specialized corrosion-resistant pipes and tubing, but this was cumbersome and expensive. As a result, Frasch’s acidizing process never achieved widespread adoption. Grebe and Sanford’s insight was to add an inhibiting agent, preferably 1-5% arsenic to the hydrochloric acid solution. This inhibitor would prevent the acid from corroding the metal well equipment without impairing its ability to dissolve limestone. The patent also suggested using a more dilute hydrochloric acid solution of 5-20% HCl (preferably 10-15%), compared to the 30%+ concentrations used by Frasch. Additionally, it mentioned that the ordinary metal pump tubing could be used to deliver the inhibited acid, whereas Frasch had to use specialized corrosion-resistant supply pipes.
Lower Court Decisions
Dow Chemical, the owner of the Grebe-Sanford patent, sued Halliburton for infringement. Both the district court and the Sixth Circuit Court of Appeals sided with Halliburton, finding the patent invalid for lack of invention. However, in an earlier case involving a different defendant, the Tenth Circuit had upheld the validity of the same patent. Dow Chemical Co. v. Williams Bros. Well Treating Corp., 81 F.2d 495 (10th Cir. 1936). The Supreme Court agreed to hear the appeal in order to resolve the circuit split.
The Supreme Court’s Decision
In a unanimous opinion authored by Justice Murphy, the Supreme Court affirmed the invalidity of the Grebe-Sanford patent. The Court evaluated the alleged points of novelty identified by Dow, but found that none of them, alone or in combination, reflected a patentable invention over the prior art.
Regarding the addition of an inhibitor to the acid, the Court stated it was “clear that the Grebe-Sanford suggestion that an inhibiting agent, preferably an arsenic compound, be added to the hydrochloric acid solution presents no patentable advance over the prior art.” Although this idea seems quite insightful to me, a non-chemist, these inhibitors were already commonly used to protect metals from acid corrosion in various industrial applications. Several earlier patents taught the use of arsenic compounds and other chemicals as inhibitors in hydrochloric acid.
Therefore, the Court reasoned, “All the Grebe-Sanford process taught was the obvious fact that hydrochloric acid could be inhibited to prevent corrosion while being used to dissolve limestone rock pursuant to the Frasch method of acidizing wells. . . . No new or unexpected results were obtained by the addition of such an inhibitor. It was perfectly plain to an expert that the metal well equipment would thereby be protected from corrosion.”
As the Court put it, “Such a process lacks the very essence of an invention.” Citing precedents such as Electric Cable Joint Co. v. Brooklyn Edison Co., 292 U.S. 69 (1934) and Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464 (1935), the Court concluded:
He who is merely the first to utilize the existing fund of public knowledge for new and obvious purposes must be satisfied with whatever fame, personal satisfaction or commercial success he may be able to achieve. Patent monopolies, with all their significant economic and social consequences, are not reserved for those who contribute so insubstantially to that fund of public knowledge.
The Court was equally unpersuaded that using a dilute 5-20% HCl acid solution represented a patentable advance. “The mere addition of water to dilute a known chemical solution does not entitle one to a patent monopoly, at least unless a definite dilution point or range is discovered corresponding to a physical phenomenon.” Kwik Set, Inc. v. Welch Grape Juice Co., 86 F.2d 945 (2d Cir. 1936). Here, no such precise dilution point was identified – the patent just broadly suggested a 5-20% range and noted that “other concentrations may be used, if desired.
Finally, the use of an ordinary metal pump tube to deliver the acid, rather than a specialized corrosion-resistant supply pipe as contemplated by Frasch, was considered “at most an incidental and unimportant part” of the Grebe-Sanford method. “It is elemental that the mere substitution of equivalents which do substantially the same thing in the same way, even though better results may be produced, is not such an invention as will sustain a patent.” citing Dunbar v. Myers, 94 U.S. 187 (1876) Smith v. Nichols, 88 U.S. 112 (1874).
In concluding the opinion, the Court addressed Dow’s arguments that the Grebe-Sanford process filled a long-felt but unmet need and achieved commercial success. However, the Court noted that such “secondary considerations” are relevant in close cases where the evidence of non-obviousness is otherwise in doubt.
[P]etitioner claims that the Grebe-Sanford process has filled a long felt want and has been a commercial success. But these considerations are relevant only in a close case where all other proof leaves the question of invention in doubt. Here the lack of invention is beyond doubt and cannot be outweighed by such factors. Moreover, there is an absence in this case of any long felt want or of any recognized problem that had baffled the contemporary art.
(Internal citations removed). Judge Prost quoted this portion of Dow in her dissent from Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034 (Fed. Cir. 2016). In that case, the Federal Circuit majority led by Judge Moore found that strong evidence of secondary considerations tipped the scale toward non-obviousness. It is unclear whether this “only in close cases” rule applies today.
In Vanda, the patentee cites this case for its statement statement that the invention was obvious because it was “perfectly plain to an expert.” Although the standard was met in Dow, the “perfectly plain to an expert” requirement does seem substantially higher than a “reasonable expectation of success.” In my view, the Dow test is certainly wrong today with its reference to “an expert.” In 1952 the Patent Act was amended to clarify that obviousness is judged from the standard of a “persona having ordinary skill in the art” — a level of knowledge and skill that is below that of an expert. This change in the statute leaves me a bit unclear on how to treat Dow Chemical and its statement of the law. In some ways, this might further support Vanda’s argument because something “perfectly plain to an expert” might not be plain to PHOSITA. On the other hand, when something is perfectly plain to an expert , PHOSITA might only have a reasonable expectation of success. We can also recognize that the difference between an “expert” and a “person having ordinary skill” is often more semantic than substantive.
I think we should all have regard to the Groucho Marx theory of patents.
He is alleged to have said: “I have found the theory of success in life. The secret of success is SINCERITY. If you can fake that, you’ve got it made.”
In patents, the secret of success is an unexpected new function or an unexpected new result. If you can fake one of them, you’ve got it made.
Fantastic comment, Paul. In patent drafting and then, later, in ex Parte proceedings before a single USPTO Examiner, it should be relatively “easy” (that word again) to spin your client’s invention as the bringer of a surprising or unexpected function or result. Even if the Examiner is sceptical, what can they do, in practice, within the law as it stands today, to stop a well-prepared applicant from carrying their claim through to issue? Resorting to an eligibility objection might work, in software fields, but elsewhere? Hardly.
The irony in the apparent lack of understanding why this should never fly:
“Resorting to an eligibility objection might work, in software fields, but elsewhere? Hardly.”
The reasons that it does fly in software are obvious to everyone, Billy: logic and instructions are abstractions. All claimed inventions whose novelty resides in these areas raise a red flag around eligibility. Twas ever thus, and this is how it will always be.
[shrugs]
Software is patentably equivalent to any of the wares in the computing arts.
Your [shrugs] only emphasize your lack of knowledge.
But you be you.
Like a lot of cases from this era (in many fields), I don’t know that there’s anything useful to take from Dow. They had a bad tendency back then to rely on rhetoric that was overbroad, indeterminate, and not well-designed to provide reproducible guidance for successive cases raising the same issues.
E.g., this has a very patent-skeptical overtone, but who could really disagree with what it actually says?
“He who is merely the first to utilize the existing fund of public knowledge for new and obvious purposes must be satisfied with whatever fame, personal satisfaction or commercial success he may be able to achieve. Patent monopolies, with all their significant economic and social consequences, are not reserved for those who contribute so insubstantially to that fund of public knowledge.”
“ who could really disagree with what it actually says”
You might be surprised. But I wouldn’t be. For a long time there was a cadre of patent maximalist zombies who would regularly pipe up with the ridiculous non-sequitur “If it was so obvious, why wasn’t it invented before?”
I think both the “perfectly plain to an expert” or a “reasonable expectation of success” test fail to appreciate the full scope of what it means to “promote the progress of science and useful arts.”
These tests basically state (albeit in different ways): if it was easy to combine the teachings, then no patent. However, these tests fail to appreciate what it takes to invent something. In any different field, there are thousands, hundreds of thousands (if not much more) possible so-called “obvious” combinations that have not been tried and probably will not be tried. The reason that these combinations have not been made is that there is only a small subset of people who actually even attempt to do something NEW. Rather, the vast majority simply do what was done in the past — it is easier. Moreover, with the vast majority of possible combinations available, only a handful will ever be made. It takes time and effort to invent — and these resources are not infinite.
Moreover, 20-20 hindsight fails to account for all of the combination that seemed obvious but didn’t work. Thomas Edison is quoted as saying “I have not failed. I’ve just found 10,000 ways that won’t work” — implying that invention isn’t just about finding the right combination but eliminating the wrong combinations as well.
WT: I, therefore, propose to make it easier to get a patent.
Patent minimalist: But that means more patents will get granted!!
WT: Yes
Patent minimalist: That means that patents will be more desirable and there will be a rush for people to invent and disclose more technology!
WT: Yes
Patent minimalist: Won’t there be a rush to the patent office with people trying to be the first to disclose a new invention?
WT: Yes
Patent minimalist: That means more people will try to file patent applications — even including people who never attempted to invent before!
WT: Yes — and what is wrong with bringing more people into the patent system and having more inventions disclosed and more quickly disclosed? Does that not promote the progress of science and useful arts?
On the flipside, if patents are harder to obtain, why will people attempt to invent? Would it just be for personal satisfaction or fame? In today’s world where an invention can be copied in China and arrive on the US shores in weeks from an initial disclosure, how much commercial success will first mover status provide someone?
Granting patents promotes the progress of science and useful arts and denying (or invalidating) patents does the opposite.
In today’s economic society in which copying is both so prevalent and so easy, there is very little benefit for a small entity to bring a new technology to market without patent protection. If the technology is good enough, it is guaranteed to be copied.
To me, progress is promoted by rewarding those who try and succeed in generating something novel.
Certainly, there are truly obvious inventions for which patent protection should not be awarded. However, I rarely see patents being denied patent protection based upon the plain meaning of the word “obvious.” Rather, I see obviousness used to deny patents based upon hindsight reconstruction of inventions using a standard that is essentially — if it could have been invented (i.e., reasonable expectation of success), then it is obvious.
The word “obvious” derives from the Latin “ob Via” lying in the road. In the context of patent rights it means “lying in the road of technical progress”. Obviously, patents should not be handed out for those who build roadblocks, but only for those who discover within the prior art universe (and enablingly disclose) a different road.
The challenge is to find a fair and efficient way of distinguishing (today) between that which was (10 or more years ago) obvious to the objective PHOSITA, and that which was inventive, that is to say, would not have been routinely adopted by such an imaginary person.
I don’t know of any other way of doing it true to the over-riding objective of any patent system, than by a TSM methodology. Preferably the one used in the EPO’s “problem-solution approach” which minimises ex post facto analysis and the mischievous creep of “secondary considerations”.
“if it was easy to combine the teachings, then no patent”
This should be sufficient for a prima facie case of obviousness. The patentee can then come forward with evidence that the combination was unpredictable (to divine or to do); there were unexpected results; contemporaneous skepticism; etc. Maybe that will carry the day, but challenges to combinations where “it was easy to combine the teachings” should not be rejected at the threshold merely because of a purported lack of motivation to do an easy, predictable modification.
The cases in the past couple of weeks have been stone-cold obvious. Minor, mechanical adjustments of close prior art, no implementation difficulties, no skepticism, no unexpected results, nothing. When the petitioner says this is an easy, predictable modification/combination of close prior art, and the patentee can’t come up with anything but a legal argument that there’s not enough contemporaneous, documentary evidence of motivation to do *this specific thing*, or “how dare you invoke obvious to try”, then the patent should probably be invalidated.
I agree that the ideal obviousness bar should be calibrated to maximize innovation. That does require taking into account the follow-on innovation potentially inhibited by weak patents. I will grant though that patents do not always inhibit follow-on innovation, given unwillingness to bring suit and the higher standard for injunctive relief.
Your proposed test, Kyle, is “Was it easy?”. I have no idea how to answer that question objectively (and I think the obviousness test ought to be objective), given that everybody involved has hindsight 100% knowledge of the subject matter claimed.
I have no idea what, in context, the word “easy” means, to somebody with 100% hindsight knowledge of the claimed subject matter. How shall a judge answer your question? Gut feeling? Perhaps on the basis of the evidence, the subjective opinions of rival technical expert witnesses? I cannot imagine a worse way to get to a fair and accurate answer to the question “Back then, was it obvious: Y/N?”
Are you a litigator who is short of work?
If only the USA were to do TSM the EPO way, your problem of establishing fairly a purported “motivation” for the PHOSITA would go away
This should be sufficient for a prima facie case of obviousness.
Easy to combine is not the standard. There must be an articulated reasoning with some rational underpinning. That’s the law as it stands now. The standard is that it is obvious — not easy.
The patentee can then come forward with evidence that the combination was unpredictable (to divine or to do); there were unexpected results; contemporaneous skepticism; etc.
So make it harder on the patentee? And what happens now when the patentee puts forth this evidence? The USPTO dismisses it and the Federal Circuit also almost always dismisses it.
That does require taking into account the follow-on innovation potentially inhibited by weak patents.
You don’t get follow-on innovation when the original innovation is stunted. Why invent when you can copy? It is a LOT easier to copy than to invent. Moreover, roadblocks in the road to progress forces others to seek other approaches to solve a particular problem, which also promotes innovation.
Copying is always the easy way out and most people tend to take the easy way out.
As someone who has seen thousands of inventions, it is relative easy to invent. Like anything, it is a skill that one can develop over time. However, what I have also found is that making any money off an invention is extremely hard, and those inventors who invent for a financial payoff tend NOT to try to invent again when their original inventions do not provide a payoff.
Frankly, I would advise any small entity that would attempt to get a patent these days to not bother. Patents are so easily invalidated these days that one’s ROI for obtaining a patent is negative. And how would I respond if they ask me, “well, if that is so, what happens when we take our product to market and some big guy copies us?” My response to them is, “then you are screwed.” That is it in a nutshell. The US patent system doesn’t work for small entities. I don’t doubt that someone could find exceptions to that statement, but on a whole, the US patent provides very little benefit to most small-time inventors.
Sorry, by “easy to combine” I meant the KSR standard: “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”
That should at least make out a prima facie case of obviousness–it is the current law after all. I’m not necessarily saying the “bar” for obviousness should be moved up all that much, but I think courts would make better decisions if the parties were directly debating the predictability and unexpected results of the modification, rather than shadow-boxing about whether the prior art “motivated” the POSA to do so. Taking “motivation” literally, which often doesn’t happen, would demand a near-anticipation standard. I think it’s a poor, ever-shifting test.
That should at least make out a prima facie case of obviousness
What should make out a prima facie case of obviousness? That every element was known? If so, then just about everything is prima facie obvious.
I think courts would make better decisions if the parties were directly debating the predictability and unexpected results of the modification, rather than shadow-boxing about whether the prior art “motivated” the POSA to do so.
Then you are transforming the standard to “could have been combined” form “would have been combined.” Under the “could have been combined” standard, then everything is obvious and we are essentially returning to a pre-1952 “flash of genius” test.
Taking “motivation” literally, which often doesn’t happen, would demand a near-anticipation standard.
Hardly. The problem I see is that most examiners cannot make a good obviousness argument to save their lives. As such, in order to make a rejection, they come up with some of the most nonsensical arguments I have every run across.
Thanks for that answer, Kyle. No apology needed. I guess that US readers here would have grasped immediately that your “easy” was a reference to KSR.
Being an EPO practitioner I am sceptical of degrees of obviousness, preferring the notion that either something was obvious or it wasn’t. I think courts with inadequate technical qualifications are seduced too often by “secondary considerations” because they find the binary question too “technical”, and so too hard for them to cope with. Encumbering every obviousness enquiry with every secondary consideration under the sun renders the enquiry beyond the means of all but the most wealthy litigants.
Resort to secondaries to decide the case reminds me of the tendency to finesse out of the obviousness enquiry altogether, it being “easier” for the judges to dispose of the case using the eligibility enquiry.
For me, the key to answering the binary question comes down to the aparently simple question “Back at the date of the claim, would the POSA have combined the two prior art disclosures relied upon in the obviousness attack: Y/N?”. That the POSA “could have combined the two is not good enough. Only when they “would” have done is the claim obvious. You succeed with the obviousness attack only when you provide reasoned argument why the POSA would (not just could) have combined the references. This approach has been up and running for more than 40 years at the EPO and is by now unassailable. Do those who end up on the losing side in EPO oppositions complain about it? As far as I know, they don’t.
BTW, may I ask, in relation to KSR, what does “familiar” mean? Presumably something more than merely “somewhere in the depths of the prior art universe”. Is “conventional” a synonym for “familiar”? Is anything “familiar” that is not within the common general knowledge of the POSA, not part of that person’s “mental furniture”?
Hindsight makes everything easier.
WT: “ Granting patents promotes the progress of science and useful arts and denying (or invalidating) patents does the opposite.”
LOL
This is mindless patent huffing. Put down the pipe, for cripes sake.
Then set forth a reasoned explanation as to how making it very hard to obtain an enforceable patent promotes the progress of science and the useful arts.
The floor is yours. I’m sure Dennis would probably let you publish your treatise in an article if you asked nicely.
However, the truth is that you don’t have any reasoned explanation for your beliefs aside from a deep-seated hat-red of the US patent system (mostly stemming from your past hat-red of the attorneys associated with that system). You don’t come here with reasoned arguments. Rather, you and Anon do your daily bickering with little changing since you two started bickering a decade plus ago.
Argue like an attorney — not argue like some 12 year old kid trying to prove that his football team (let’s call it the Chargers) is the best team in the NFL. Try to act like an adult, will you?
There is no point in “arguing” with mindless self-serving tripe. That would be a waste of time.
As for this:
“ set forth a reasoned explanation as to how making it very hard to obtain an enforceable patent promotes the progress of science and the useful arts”
Your entire premise is that EVERY patent promotes progress. What difference does it make if it’s hard or easy to get one? The enforceable ones that are gotten promote progress. There you go. Done.
You have no evidence that the current patent system isn’t promoting some amount of progress. On the contrary, we know that it’s being used to the tune of billions of dollars by all kinds of companies who continue filing reams of applications every year.
We also know that when the gates are opened wide the worst people in the world rush in to take advantage and the only “progress” that takes place is “progress” in the art of monetizing patents that enrich those rotten people and their rotten attorneys while everyone else pays. Is there a shortage of rich profiteering s c u m b a g s out there? Seems like Texas and Florida and swaths of Silly Con Valley have plenty of those already.
It’s true that history tends to repeat itself but what’s the point in maximizing the probability that we re-live another tech bubble and re-litigate the same issues? So we can write more laws that make it even harder than it is now to get and enforce patents?
You have no evidence that the current patent system isn’t promoting some amount of progress.
Nice straw man argument. If the US grants just 10 patents a year, that is enough to “promot[e] some amount of progress.” If the US borrows some C-5 aircraft from the Air Force and drops $10,000,000,000 in $100 bills over the country, that will also serve to promote progress as I’m sure some small percentage of that money will be used by an inventor to invent something.
However, one can make reasoned policy arguments as to how much progress is enough, the costs associated with promoting that progress, and finding the a balance between the two. However, you aren’t here for that kind of policy debate. Rather, you are merely here to insult the fellow posters and the profession as a whole.
We also know that when the gates are opened wide the worst people in the world rush in to take advantage and the only “progress” that takes place is “progress” in the art of monetizing patents that enrich those rotten people and their rotten attorneys while everyone else pays.
Money always attracts the worst people in the world. There will be grifters associated with every government program that provides certain benefits. Do we eliminate (or vastly curtail) welfare because it is abused? Do we eliminate subsidies to farmers because it is abused?
You seem to believe that throwing out the baby with the bathwater is the best approach. In fact, you seem to take the approach that killing babies is preferable because there is less bathwater to deal with. You are using the same (il)logic that the right uses in attempting to eliminate social programs for the need — OH NO, GRIFTERS!!!
There are approaches to reducing grifting that doesn’t involve gutting the system. And what I find amusing is that gutting the system, is EXACTLY what the Big Tech of Silicon Valley wants. You are doing their dirty work for them.
monetizing patents that enrich those rotten people and their rotten attorneys while everyone else pays
How do you think Big Tech got so rich? Because they took the technology that someone else invented and used it for themselves. Why invent when you can copy? Why pay a reasonable royalty when you can grind small inventors down? Small companies sell their assets to PAEs because these small companies rarely have the resources to fight back. If patents were easier to enforce you would have less companies like Intellectual Ventures paying pennies on the dollar to acquire patent assets.
PAEs are a direct result of how hard it is to enforce patents these days. The PAE business model doesn’t work if patents were valued fairly. Rather, the PAE business model works because they can acquire patents for pennies on the dollar. The PAEs are a needed middleman today because companies will not license technology directly from the inventors who created that technology. They are needed because there is a huge barrier to assert a patent and few companies have the resources to overcome that barrier. Remove that barrier, and PAEs will have much more trouble acquiring patents as inventors will be able to much more easily directly approach companies
But what about the small companies that get sued … cries the patent minimalist. Again, this is a direct result of the larger corporations essentially being immune from patent lawsuits. Smaller companies are a fairer fight. However, lawsuits are time and resource intensive and if the large mega-corporations were able to be sued again, then patent owners will focus their time and efforts on the mega-corporations.
Is there a shortage of rich profiteering s c u m b a g s out there
Should we make it harder for people to sue companies for negligence/personal injuries? There is a whole class of attorneys making money off of them. By your logic, we should make it harder to prove that someone was injured by a defective product because some attorney is going to make money off of them.
There is no point in “arguing” with mindless self-serving tripe. That would be a waste of time.
LOL. If there is no point in arguing, then why are you here? Seriously, why do you even bother engaging in people on this blog? It must be mind-numbing to come here every day and write the same underdeveloped arguments year after year after year. Who are you attempting to convince with 4th grade logic?
I am reminded of two drunks arguing which side of the Laffer curve maximum we are at. The less inebriated drunk thinks he has eloquently dismantled his interlocuter’s groundless position.
I don’t understand your challenge. By “enforceable” you presumably mean “not invalid”. I agree that those patents that are valid ought to be swiftly enforceable. Conversely, those duly issued patents that are in fact not valid ought not to be enforceable at all. Rather, they deserve to be expunged from the Register just as swiftly as the valid ones are enforced. THAT is what promotes the progress.
The difficulty, of course, is devising a litmus test “Invalid Y/N?” that works fairly, efficiently and at proportionate cost and time. Is there such a test yet, in the USA?
I don’t read “perfectly plain to an expert” to be set down as a standard here. In context, I read it as “this is well past the line of obviousness to the point of being perfectly plain to an expert” which makes sense given the additional secondary considerations discussion.
Again I will point out the lack of new or unexpected results language and the merely applying known logic language. In general, it is obvious to apply known things for their expected results, which makes the notion of a reason a hypothetical phosita would choose or be directed toward a particular reference (i.e. a motivation to combine for a benefit) to be a useful, but not absolute, standard. You don’t need a reason to desire a toaster in a car, you just need to be enabled to place a toaster in a car, and the car toaster has to make toast. When you lack the ability to power the toaster with the car or the result of using the toaster is that it makes eggs instead of toast, you have a new invention. When those two things don’t happen you’re just being this guy:
He who is merely the first to utilize the existing fund of public knowledge for new and obvious purposes must be satisfied with whatever fame, personal satisfaction or commercial success he may be able to achieve. Patent monopolies, with all their significant economic and social consequences, are not reserved for those who contribute so insubstantially to that fund of public knowledge.
OK; RG, but what about a combination of two components that was indeed obvious for the PHOSITA to make but, according to the patent application for it, delivers as a bonus result something additional to the results for which the two individual components were already known. Is that sufficient for patentability, a guarantee of patentability? Even if the additional technical effect is more or less a product of the patent drafter’s fertile imagination and creativity. Or might (depending on the facts of the case) the combination nevertheless, and at least sometimes, simply remain unpatentably obvious?
Not sure the toaster in a car example is helpful. It’s hard to imagine why merely shifting the location of the toaster is enough of a difference to turn the toaster into an egg cooker.
Was Dow among the decisions that the legislative history and drafters of the 1952 Patent Act cited as one of the existing decisions which which the new Act’s new “obviousness” test was intended to be consistent?