and has reached the Senate after lengthy hearings on the
House side. The bill has the general approval of all parties
concerned and represents a step forward in the codification
of our laws, for it brings together in one package all of the
laws relating to patents that were contained in the Revised
Statutes of 1874 down to the present time. The bill is divided
into three categories *** Into these three categories the
existing laws relating to patents have been codified. In view
of decisions of the Supreme Court and others as well as trial
by practice and error there have been some changes in the
law of patents as it now exists and some new terminology
used. All these matters *** have been carefully gone
over in hearings and the bill as it is now presented to the
Senate represents, in the opinion of the committee, legislation
of merit * * * 14

Immediately following this exchange, the bill was passed. (2) House and Senate reports

The following statements touching upon the meaning and intent of section 103 are found in both the House and Senate reports:

Although the principal purpose of the bill is the codification of title 35, United States Code, and involves simplification and clarification of language and arrangement, and elimination of obsolete and redundant provisions, there are a number of changes in substantive statutory law. These will be explained in some detail in the revision notes keyed to each section which appear in the appendix of this report. The major changes or innovations in the title consist of incorporating a requirement for invention in section 103 and the judicial doctrine of contributory infringement in section 271.15

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.

That provision paraphrases language which has often been used in decisions of the courts, and the section is added to the statute for uniformity and definiteness. This section should have a stabilizing effect and minimize great departures which have appeared in some cases.16

14 Ibid.

14 H. Rept. 1923, 82d Cong., 2d sess., p. 5; S. Rept. 1979, 82d Cong., 2d sess., p. 4. 10 Id., H. Rept. at 7, 8. Rept. at 6.

(3) Revision notes

The "Revision Notes" included as appendices in both House and Senate reports accompanying H. R. 7794 read as follows: 17

There is no provision corresponding to the first sentence explicitly stated in the present statutes, but the refusal of patents by the Patent Office, and the holding of patents invalid by the courts, on the ground of lack of invention or lack of patentable novelty has been followed since at least as early as 1850. This paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked

out.

The second sentence states that patentability as to this requirement is not to be negatived by the manner in which the invention was made; that is, it is immaterial whether it resulted from long toil and experimentation or from a flash of genius.

IV. SELECTED ANNOTATION OF SECTION 103, PATENT ACT OF 1952

A. UNITED STATES FEDERAL COURTS

1. UNITED STATES DISTRICT COURTS

Thys Co. v. Oeste (N. D. Calif. 1953), 111 F. Supp. 665, 673-674: A careful study of this new patent code, however, convinces this court that Congress has not intended to change any of the classical norms by which invention shall be tested.

The purpose of the new revision, as the reviser's note points out, is not to revolutionize but to "stabilize" existing law.

Gagnier Fibre Products Co. v. Fourslides, Inc. (E. D. Mich. S. D. 1953), 112 F. Supp. 926, 929:

* this section, 103, of the new act [first clause] merely stabilized or gave statutory effect to what had been well recognized case law.

[as to the second clause of section 103] This, we must admit is new, because in a Senate report that clause is clarified and it does change some phases of case law. *** This wording officially not only rejects the "flash of genius" test of Cuno Engineering *** but it goes farther. Today, one may have a patent if he just "stumbled" upon his invention or it might have even been the result of an accident. Joseph Bancroft and Sons Co. v. Brewster Finishing Co., Inc. (D. N. J. 1953), 113 F. Supp. 714, 721:

Legislative history indicates that Congress did not intend to formulate a new standard of invention: * * *

" Id., H. Rept. at 18, 8. Rept. at 18.

Channel Master Corp. v. Video Television, Inc. (E. D. N. Y. 1953), 117 F. Supp. 812, aff'd, 209 F. 2d 511 (5th Cir. 1953):

Hence, section 103 is merely a codification of the basic requirement that the subject matter of a patent must have invention and patentable novelty which the section expresses in terms of "obviousness" in view of the "prior art". Burt v. Bilofsky (D. N. J. 1954), 120 F. Supp. 822, 830:

The defendants contend that Sections 102 and 103 of the Patent Act of 1952, 35 U. S. C. A., provide a new test of patentability insofar as the issue of patentability in the instant case is concerned. This contention is without merit. Modern Art Printing Co. v. Skeels (D. N. J. 1954), 123 F. Supp. 426, 432:

Section 103 of the revision codifies decisional patent law. Hughes v. Salem Co-operative Co., Inc. (W. D. Mich. 1955), 134 F. Supp. 572, 576:

The new Patent Act of 1952 *** did not change the basic tests for determining patentability, and the court must determine, within the meaning of the statute conferring patent monopoly, whether there is invention and patentability.

Seismograph Service Corp. v. Offshore Raydist (E. D. La. 1955), 135 F. Supp. 342, 350-351:

*

The Congress has now *** sought to define a standard of patentability. * *This standard of patentability is apparently an effort to state in statutory form what the Supreme Court has held in many cases. If it is an effort, as has been suggested, to reduce the standard of invention as recognized by the Supreme Court, then that effort must fail for the reason that the Supreme Court is the final authority on the constitutional standard of patentability.

2. UNITED STATES COURTS OF APPEAL

Wasserman v. Burgess and Blacher Co. (1st Cir. 1954), 217 F. 2d 402, 404:

Congress by the passage of the Patent Act of 1952 which enacted as a statutory condition of patentability that the proposed invention would not "* * * 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," merely codified the existing decisional law.

Lyon v. Bausch and Lomb Optical Co. (2d Cir. 1955), 224 F. 2d 530, 536-537, cert. den. 350 U. S. 911:

***Section 103 only restores the original gloss, substantially in ipsissimis verbis; which has never been overruled; but on the contrary for 70 or 80 years had continued to be regarded as authoritative. Moreover and this is the important consideration-although it may have ceased in

practice to be followed, and had come to enjoy no more than
lip service, there never has been the slightest intimation of
any definite substitute; nothing more than an unexpressed
and unacknowledged misgiving about the increased facility
with which patents were being granted. * * * Certainly a
legislature, whose will the courts have undertaken to pro-
liferate, must be free to reinstate the courts' initial interpre-
tation, even though it may have been obscured by a series
of later comments whose upshot is at best hazy.

Gentzel v. Manning, Maxwell and Moore (2d Cir. 1956), 230 F. 2d 341, 344:

The somewhat more lenient standard of patentability expressed in Lyon v. Bausch and Lomb *** as required by the recently enacted statute *** will not save this weak patent in a crowded field, since whatever advance plaintiff may have made over the prior art is both obvious and slight.

Stanley Works v. Rockwell Mfg. Co. (3d Cir. 1953), 203 F. 2d 846, cert. denied 346 U. S. 818 (1953):

On its face section 103 is merely a codification of decisional patent law. The report of the Senate Committee on the Judiciary leaves no doubt about this [p. 849].

United Mattress Machinery Co., Inc. v. Handy Button Machine Co. (3d Cir. 1953), 207 F. 2d 1, 5:

Congress has made no attempt to define the term "invention," either under the older law or in the new Patent Act. ** The district court * ** stated further that the button was unpatentable as not meeting the "flash of genius" test of Cuno Engineering Corp. *** we do not find it necessary to decide what, if anything, is left of that muchdiscussed criterion of patentability since the enactment of the new patent statute, particularly the second sentence of section 103, ***Cf. the second paragraph of the reviser's note following 35 U. S. C., sec. 103 ***

R. M. Palmer Company v. Luden's, Inc. (3d Cir. 1956), 236 F. 2d 496, 499:

It is, perhaps, rather strong language to say that the new act changed the law of patentability. The choice of language in the act indicates, as the legislative history discloses, an attempt to state what the law has been. As such, it is a codification. The difficulty always existed in the application of the law, because to a large extent the standards have been indefinite and subjective. And judicial attempts to improvise expressions covering that which has been said many times before account for numerous descriptive phrasings of an elusive concept. The act was intended to achieve the objective of stabilizing the law through legislative expression which becomes the touchstone of the decisions. Nor is it likely that a constitutional problem will arise so long as the expected interpretations of the statute come within the boundaries of long standing judicial declarations of the con

tent of patentability. To what extent a change is wrought would seem to depend upon the preexisting views of a tribunal as to the standard upon which it has determined patentability. As pointed out *** in Lyon v. Bausch and Lomb Optical Co. *** despite adherence to the keystone cases, like Hotchkiss v. Greenwood *** intangible elements have directed judicial attitudes to "misgiving about the increased facility with which patents were being granted."

We are inclined to accept the sensitive observations of Judge Learned Hand as to the judicial tendency of recent years, even within the language of the older decisions, to expect an indefinite "more" of the proffered invention. The act reaffirms the presumptive validity of patents (35 U. S. C. 1952 ed., sec. 282), and specifies patentability in terms with which all in the field are familiar. It would appear that in this context, and by this choice of terms, the intended stabilizing effect is sought to be achieved. Beyond this, the tribunal faced with an issue of validity is left to the struggle to determine upon which side of a vague boundary line it will place the alleged invention. *** There is no longer any doubt that the "flash of genius" has been laid to rest. Plax Corp. v. Precision Extruders, Inc. (3d Cir. 1957), 239 F. 2d 792, 794:

*We enunciated our interpretation of section 103 in R. M. Palmer Co. v. Luden's, Inc. * * * and *** Newburgh Moire Co. v. Superior Moire Co. We need not repeat in detail here what was said there. It is not necessary that an invention result from a "flash of genius". We think that Ferngren's work involved "more ingenuity * * * than the work of a mechanic skilled in the art". * *

Interstate Rubber Products Corp. v. Radiator Specialty Co., Inc. (4th Cir. 1954), 214 F. 2d 546, 548-549:

The rule [patentability of combination claims] applied by the majority of the Supreme Court in this case [Supermarket] was not changed by the revision of the patent statute by Congress in 1952. *** the provisions of section 103 merely codified the law laid down by the courts during the past hundred years, and were added to the statute for purposes of uniformity and definiteness.

General Motors Corp. v. Estate Stove Co. (6th Cir. 1953), 203 F. 2d 912, 915-918, cert. denied 346 U. S. 822 (1953):

* * * it would appear that the new act has done no more *** than to adopt the test of so-called "obviousness" which has, in the past, been enunciated by the courts, and that it did not provide a new test differing from that which has been generally followed in the adjudication of patent We are, however, of the view that the principle stated in the Great Atlantic and Pacific Tea case is not modified by the new act, but continues to be the law, and is here controlling.

cases.

***