Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 91

In this case, the U.S. Patent Office had issued a patent on a mode of fastening a rod or shank to a knob, such as a doorknob. In this case, the knob was made of clay; however, the method of fastening the shank to the knob had been known and used by others in the prior art, and had been applied by others previously for the fastening of shanks to metallic knobs, but not to clay knobs. Apparently, clay knobs had been known and used before, and the shank and spindle by which the shank was attached to the knob were known before. However, this known means of attachment had never before been used to attach a shank to a knob made of potter’s clay. It was shown that, prior to this invention, metallic knobs had been attached to shanks by means of a cavity in the form of a dovetail and infusion of melted metal, which is the same mode claimed in the invention before the Court considering the clay doorknob. The Supreme Court ultimately held in this case that substituting a knob of clay was simply the substitution of one known material for another, and therefore obvious.

The Supreme Court stated that the improvement, if any, consisted in the superiority of the material, clay versus metal, and this was not considered new over materials previously employed in making knobs. The difference between the patented invention and the prior art was merely formal, and destitute of ingenuity or invention. The Court also stated that the invention gave evidence of judgment and skill in the selection and adaptation of the materials used in the manufacture of the instrument for the purposes intended, but nothing more. In other words, the Court felt that a skilled technician could merely substitute clay for metal knobs, and that would constitute the subject matter of the alleged invention. The Court went on to say that, “unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitutes an essential element of every invention.” In other words, the improvement here was the work of a skillful mechanic, not that of an inventor.

This was the first case in which the Supreme Court added the requirement of “invention or non‐obviousness” to the requirements for patentability. Remember that such non‐obviousness requirement was not in the patent statute of 1836, under which the case of Hotchkiss v. Greenwood was decided.