Sec. 103. Conditions for patentability, nonobvious subject matter. A patent may not be obtained though the invention is not identically disclosed or described in the material specified in section 102 of this title, if the differences between the subject matter sought to be patented and said material 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. Patentability as to this condition shall be determined by the nature of the contribution to the art, and shall not be negatived by the manner in which such contribution may have been accomplished. The first paragraph of section 103 differs from section 23 of the preliminary draft only in that it requires that the subject matter "as a whole" of an alleged invention "would have been obvious at the time the invention was made" to a person having ordinary skill in the art, rather than that the subject matter "as a whole" of the alleged invention "be obvious to an ordinary person skilled in the art" without reference to the time that such obviousness was required. The second paragraph eliminated any reference to the "nature of the mental processes" by which the contribution may have been accomplished, and omitted the words "advancement of the." b. H. R. 3760, section 103 Section 103 of this bill pertains to the test of invention, it reads as follows: Sec. 103. Conditions for patentability; nonobvious subject matter. A patent may not be obtained though the invention is not identically disclosed or described in the prior art set forth in section 102 of this title, if the differences between the subject matter sought to be patented and that 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. 2. LEGISLATIVE ACTION a. H. R. 9133 H. R. 9133 was primarily intended for circulation among the patent bar and the public with the hope of stimulating further comment and general interest in the revision and codification of the patent laws. There were no hearings on the bill and no report was issued. Instead, a fresh bill, H. R. 3760, was introduced. b. Hearings, H. R. 3760 Hearings on H. R. 3760 were held on June 13-15, 1951, before Subcommittee No. 3 of the House Committee on the Judiciary." 11 See note 10, supra. 97082 583 (1) Colloquy between I. J. Fellner, Dr. Salsbury's Laboratories, and Representative Bryson The apparent discrepancy between the wording of section 103 of H. R. 9133 and section 103 of H. R. 3760 was brought to the attention of the subcommittee by I. J. Fellner, manager, patent department, Dr. Salsbury's Laboratories, from whose testimony (hearings, pp. 123-124) the following is extracted: Mr. FELLNER. As far as section 103 is concerned, the old version in H. R. 9133 provided for objective criteria in evaluating the invention ***. And I am asking myself whether this deletion again is to be understood as a mere revision of language or whether the committee thought that the original wording was too broad, and that actually the inventive standards should be set in accordance with, for instance, such type of decisions as those in the Great Atlantic case recently rendered in the Supreme Court * The question now before the committee is, whether it is of the opinion that we should have a positively evaluative criterion for inventions. In other words, shall we say that evidence of invention is recognized in the fact itself that a new device or a new machinery satisfying a need of long standing is presented where the inventor is the first to recognize that need and has found the solution, though it be simple for it, and where the solution was readily accepted by the trade? Is that evidence of invention or not? I thought the committee was of that opinion when I read the original version in H. R. 9133, where it was specified that "patentability as to this condition shall be determined by the nature of the contribution to the art." In other words, evidence of invention is the readiness with which the novelty has been accepted; it is spelled out by the value which actually resides in the contribution to art. Under this definition we would not have to go into a particular inquiry with regard to the question of inventiveness or what has been called "inventive genius," which terms have been used by various Supreme Court decisions and in various other court opinions. Now, in the new bill, this positive criterion of evidence of invention has been omitted. Does that mean to repeal that part of the original concept according to which evidence of invention may actually be represented by the value of the thing that has been invented or has been found by the inventor? We thought it did. Mr. BRYSON. We think not. Mr. BRYSON. We think not * * Mr. FELLNER. Do you think that the sentence in the second paragraph "patentability shall not be negatived by the manner in which such invention was made" broadens, so to speak, the concept of invention so as to include the positive criteria as found in the original bill. Mr. BRYSON. I do. (2) Proposed amendments to H. R. 3760 Many of the witnesses proposed substitutes for or amendments to section 103. The various proposals are set out below with a short statement of the reasons advanced in behalf of the proposed changes. (a) Coordinating Committee on Revision and Amendment of the Patent Laws of the National Council of Patent Law Associations.-Proposed substitute: A patent may not be refused or declared invalid when the invention is not identically disclosed or described as set forth in section 102 of this title, unless the difference between the subject matter sought to be patented and that 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. No specific reasoning was advanced for this proposed change (hearings, p. 33). (b) Aircraft Industries Association.-Proposed substitute: A patent may not be refused or declared invalid when the invention is not identically disclosed or described in the prior art set forth in section 102 of this title, if the differences between the subject matter sought to be patented and that prior art are such that the subject matter as a whole involved more than the ordinary skill of the art at the time the invention was made. Patentability shall not be negatived by the manner in which the invention was made. The reasons given for this recommendation were as follows (hearings, p. 114): Since these conditions for patentability relate to a "patent" they must apply to the refusal of a patent by the Patent Office or the considerations of a judicial tribunal on validity or invalidity. The conditions should be the same in either case. The second change rearranges the thoughts expressed to qualify what "would have been obvious" is intended to mean. (c) Frank G. Campbell, Shepherd & Campbell.-Proposed substitute: 103a. A case of patentability shall be deemed to have been established when the device of the application achieves a new and useful result, which no single prior device is capable of producing and which result goes beyond mere increased excellence of workmanship. 103b. A case of patentability shall also be deemed to have been established where a new assembly and relationship of parts accomplishes an old result in a markedly more facile economical and efficient way and especially where a marked saving in time or labor by the user results. Mr. Campbell deemed it highly desirable to lay down some positive rule rather than a negative one, as to what rises to the dignity of invention (hearings, pp. 190-191). (d) Callard Livingston.-Proposed substitute: A patent may be obtained provided the invention is not identically described or disclosed in the prior art set forth in section 102 of this title, and provided that the differences between the subject matter sought to be patented and said prior art are such that the subject matter as a whole could not be reproduced without modificaton of the prior art as it existed at the time the invention was made. According to Mr. Livingston, the proposed amendment would tend to remove the purely subjective question of what is "mechanical skill" which, like "invention," is practically indeterminable and not susceptible of ultimate definition (hearings, p. 192). (e) G. Wright Arnold and Edward R. Walton, Jr.-Proposed addition: Independently of and apart from the above [section 103 as set forth in H. R. 3760], a patent may be obtained for an invention and patentable novelty shall be found therefor, whenever there is established a new functional relationship between any of the factors which are required for rendering an invention in the industrial art practically operative. This proposal would retain the obvious or nonobvious test of patentability as set forth in H. R. 3760, but, by adding the recommended paragraph, would also set up an objective or "new functional relationship" test which would compel issuance of a patent when it is established that there are new functional relations existing between the cooperating factors (hearings, pp. 193, 198). (f) Louis Robertson.-Proposed substitute: A patent may not be obtained though the invention is not identically disclosed or described in the prior art set forth in section 102 of this title, if the differences between the subject matter sought to be patented and that prior art are such that the subject matter as a whole would have naturally occurred at about the time the invention was made to a person having only ordinary skill in the field to which said subject matter relates if he had knowledge of said prior art (all prior art readily available to persons in that field) [words in parentheses preferred] but had no guidance by its preselection, and said subject matter could have been worked out by such person with ordinary technical assistance as he would have been expected to call upon. Mr. Robertson took the position that almost any inventive idea could be induced into the mind of a good mechanic by carefully selecting the right prior patents, placing them in front of him and saying, "What do these two patents together suggest to you?" Consequently, the test should be: Would the invention have occurred to him without such direction of his thoughts? (hearings, pp. 217-219). (g) F. R. Jenkins.-Proposed amendment: Insert after the first sentence of section 103: "An applicant's own statement in his application may not be used against him in interpreting prior art." The reasons given for this proposal were as follows: If, within a composition or machine, applicant states he may use an element A or B, and previously A has been similarly used, prior art rather than applicant's application should be relied on to teach the equivalence of A and B if the skilled person does not already know it (hearings, pp. 219–220). (h) Bar Association of the City of New York.-Proposed substitute: 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 purpose of these proposed changes was to make it clear that all prior art is here meant and not merely the prior art referred to in section 102 which is limited to anticipatory art (hearings, pp. 221–222). c. H. R. 7794 The committee, almost a year after the hearing, on May 20, 1952, in lieu of reporting H. R. 3760, introduced a fresh_bill, H. R. 7794, which was approved and signed by the President, July 21, 1952. Section 103 of the new bill, which became law without amendment, differed from section 103 of H. R. 3760 in that it incorporated the amendments proposed by the Bar Association of the City of New York, set forth above. (1) Colloquy between Senator McCarran and Senator Saltonstall Senator Wiley, in presenting the bill for consideration, stated: The bill simply constitutes a restatement of the patent laws of the United States.12 Later, Senator McCarran took up the bill and the following exchange occurred: 13 Mr. SALTONSTALL. Mr. President, will the Senator from Nevada tell us the purpose of the bill? Mr. MCCARRAN. The bill would codify the patent laws of the United States. It is under the able guidance of the Senator from Wisconsin, Mr. Wiley. Mr. SALTONSTALL. I am not a patent lawyer, but I know patents are a very technical subject. Does the bill change the law in any way or only codify the present patent laws? Mr. MCCARRAN. It codifies the present patent laws. Following this, Senator McCarran asked and obtained permission to insert the following prepared statement: This legislation has been in the process of study and consideration for a number of years. It has passed the House "Cong. Rec. 98:9097 (1952). "Cong. Rec. 98:9323 (1952). |