Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 95

The claims of the patent before the Supreme Court in this case asserted the invention of a cashiers’ counter (such as the check‐out counter in a grocery store) equipped with a three‐sided, horizontally disposed, U‐shaped frame or rack, with no top or bottom. When pushed or pulled along the top of the checkout counter, the frame moved the groceries deposited within it by a customer to the checking clerk, and left them there when pushed back to repeat the operation. I recall these devices being used in grocery stores when I was young—they have now been replaced by moving conveyor belts.

The Supreme Court noted that this device had been widely adopted and successfully used, but did it only bring old elements together? The Court held that the mere aggregation of a number of old parts or elements, which in the aggregation perform or produce no new or different function or operation than they performed individually before, is not patentable invention. The Court noted that there was no finding that the old elements that made up this device performed any additional or different function in the combination than they performed out of it. The Court stated that the three‐sided rack would draw or push goods put within it from one place to another—just what any such rack would do on any smooth surface—and the guide rails keep it from falling. The Court held that a patent for a combination that only unites old elements with no new change in their respective functions, such as presented here, obviously withdraws what technology is already known to others into the field of its monopoly and diminishes the resources available to skillful men. The Court held that the patentee had added nothing to the total stock of knowledge, but had merely brought together segments of prior art in an attempt to claim them in congregation as a monopoly.

The Court continued by saying that the framers of the Constitution plainly did not want to grant exclusive rights freely. To justify a patent, the invention had to serve the ends of science—to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. The court went on to reaffirm the “inventive genius” test for patentability as set forth in the previously mentioned Cuno Engineering case. The Supreme Court in the present case stated:

“The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end—the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.”

Thus, the Supreme Court in 1950 reinforced the “flash of genius test” as a test for patentability, thereby begging the question whether inventions that had taken a long time to develop would qualify as patentable inventions. Fortunately, this issue was directly taken up by the U.S. Congress, which passed a new patent statute in 1952, specifically overruling the Cuno Engineering case “flash of genius” test by stating that the patentability of an invention will not be negated by the manner in which the invention is made. Therefore, the “flash of genius” test is no longer applicable to determine patentability, and those inventions that resulted from dogged determination and perseverance over a period of time qualify as non‐obvious and patentable, upon meeting the other criteria of patentability—falling into a category of patentable subject matter; utility for a stated purpose; and novelty over the prior art.