Patent It Yourself - PDF Archive

110 | Patent it YOURSELF
continuously) to satisfy the unobviousness requirement.
On the other hand, a relatively large physical difference
will need only minor new results for the PTO to consider it
unobvious. That is, in Fig. 5A (The Patentability Mountain)
the height of the fourth step can be shortened if the height
of the third step is increased.
As indicated, new-use inventions don’t involve any
physical change at all in the old hardware. However, the
new use must be (1) a different use of some known hardware
or process, and (2) the different use must produce new,
unexpected results.
EXAMPLE: Again consider the Venetian blind cleaner
used as a seed planter, and aspirin used as a growth
stimulant, discussed in Section C5, above. In both
instances, the new use was very different and provided
a totally unexpected result: thus both inventions would
be patentable. Also, in another interesting new-use
case, the patent court in Washington, DC, held that
removing the core of an ear of corn to speed freezing
and thawing was unobvious over core drilling to speed
drying. The court reasoned that one skilled in the art of
corn processing could know that core removal speeds
drying without realizing that core removal could also
be used to speed freezing and thawing. Accordingly,
the court held that the new result (faster freezing and
thawing) was unexpected since it wasn’t described or
suggested in the prior art.
The courts have held that the substitution of a different,
but similarly functioning, element for one of the elements
in a known combination, although creating a “novel”
invention, won’t produce a patentable one unless the results
are unexpected. For example, consider the substitution, in
the 1950s, after transistors had appeared, of a transistor
for a vacuum tube in an old amplifier circuit. At first blush
this new combination of old elements would seem to the
uninitiated to be a patentable substitution, since it provided
tremendous new results (decreased power consumption,
size, heat, weight, and far greater longevity). However,
you’ll soon realize that the result, although new, would
have been entirely foreseeable and expected since, just as
in the carbon-fiber/bicycle case, the power reduction and
reduced-weight advantages of transistors would have been
already known as soon as a transistor made its appearance.
Thus, although substituting them for tubes provided many
new results, it didn't provide the old amplifier circuit with
any unexpected new results. Accordingly, the PTO’s Board
of Appeals held the new combination to be obvious to a
PHOSITA at the time.
A factor that works against inventors is that to most
people, many inventions seem obvious once they understand
the key ideas. So sometimes we have to convince the
patent examiner, a potential licensee, or even a judge, not
to use hindsight and to try to view the problem without
knowledge of the invention in order to understand why it’s
actually unobvious.
If you’re still a bit misty about all this, put yourself in
the shoes of an electronic engineer who, at the time of the
replacement of the vacuum tube with the transistor, was
skilled in designing vacuum tube circuits and was currently
designing a flip-flop circuit. Along comes this newfangled
“transistor” that uses no heater and weighs one-tenth as
much as a comparable tube, but which provides the same
degree of amplification and control as the tube did. Do
you think that it wouldn’t be obvious to the engineer to try
substituting a transistor for the tube in that flip-flop circuit?
Similarly, the PTO would consider obvious the substitution
of an integrated circuit for a group of transistors in a
known logic circuit, or the use of a known radio mounting
bracket to hold a loudspeaker enclosure instead of a radio.
The CAFC held that “the routine substitution of modern
electronics to an otherwise unpatentable invention typically
creates a prima facie [on its face] case of obviousness.” In re
Comiskey, 499 F.3d 1365 (2007).
The PTO will also consider as obvious the mere carrying
forward of an old concept, or a change in form and degree,
without a new result. For instance, when one inventor
provided notches on the inner rim of a steering wheel
to provide a better grip, the idea was held to be obvious
because of medieval sword handles that had similar notches
for the same purpose. And the use of a large pulley for a
logging rig was held nonpatentable over the use of a small
pulley for clotheslines. These situations are known as
“obviousness by analogy.”
On the other hand, one inventor merely changed the slope
of a part in a papermaking (Fourdrinier) machine; as a
result the machine’s output increased by 25%—a dramatic,
new, and unexpected result that was held patentable.
In the recipe field it’s usually difficult to come up with
an unobvious invention, since most ingredients and their
effects are known.
EXAMPLE: Lou comes up with a way to make mustardflavored
hot dog buns—admix powdered mustard
with the flour. Even though Lou’s recipe is novel, the
PTO will almost certainly hold it to be obvious to a
PHOSITA since the result of the new combination was
entirely foreseeable and expected.