Graham v. John Deere Co., 383 U.S.

1
Case Summary

Procedural Posture

Two decisions of the United States Court of Appeals for the Eighth Circuit were consolidated on appeal
to consider the effect of the Patent Act of 1952, 35 U.S.C.S. § 103, on the validity of patents. One
decision granted judgment for respondents in petitioners' patent infringement suit, and the other
affirmed judgment for respondent, who brought cross actions for infringement in petitioners'
consolidated declaratory judgment actions.

Overview

Two appeals were consolidated to review the validity of patents in light of the Patent Act of 1952, 35
U.S.C.S. § 103, which provided that in determining the patentability of a device it was necessary to
consider not only its novelty and utility, but also its obviousness to one of ordinary skill in the art. The
court affirmed a circuit court judgment in favor of respondents in petitioners' plow clamp patent
infringement suit, and reversed a decision affirming judgment for respondent, who brought cross
actions for infringement of its sprayer patent in petitioners' consolidated declaratory judgment suits.
On appeal, the court held that § 103 placed an emphasis on the factor of obviousness but did not
lower the level of patentable invention. The court then examined the patents in question in light of the
prior art and determined that the plow clamp patent in the first case was invalid because there were
no operative mechanical distinctions, much less nonobvious differences in petitioners' device, and the
sprayer patent in the second two cases was also invalid because its invention rested on small,
nontechnical differences in a device that was otherwise old in the art.

Outcome

The court affirmed judgment in favor of respondent plow manufacturers and reversed judgments in
favor of respondent and its patented sprayer, applying its finding that the Patent Act of 1952 did not
change the general level of patentable invention, and holding that the inventions in question were
invalid because their obviousness would be evident to one of ordinary skill in the pertinent art.

Syllabus
In No. 11 petitioners sued for infringement of a patent, consisting of a combination of old mechanical
elements, for a device designed to absorb shock from plow shanks in rocky soil to prevent damage to
the plow. In 1955 the Fifth Circuit held the patent valid, ruling that a combination is patentable when
it produces an "old result in a cheaper and otherwise more advantageous way." Here the Eighth Circuit
held that since there was no new result in the combination the patent was invalid. Petitioners in Nos.
37 and 43 filed actions for declaratory judgments declaring invalid respondent's patent relating to a
plastic finger sprayer with a "hold-down" cap used as a built-in dispenser for containers with liquids,
principally insecticides. By cross-action respondent claimed infringement. The District Court and the
Court of Appeals sustained the patent. Held: The patents do not meet the test of the
"nonobvious"  [****2]  nature of the "subject matter sought to be patented" to a person having
ordinary skill in the pertinent art, set forth in § 103 of the Patent Act of 1952, and are therefore
invalid. Pp. 3-37.

(a) In carrying out the constitutional command of Art. I, § 8, that a patent system "promote the
Progress of . . . useful Arts," Congress established the two statutory requirements of novelty and
utility in the Patent Act of 1793. Pp. 3, 6, 12.

(b) This Court in Hotchkiss v. Greenwood, 11 How. 248 (1851), additionally conditioned the issuance of a
patent upon the evidence of more ingenuity and skill than that possessed by an ordinary mechanic
acquainted with the business. P. 11.
(c) In § 103 of the 1952 Patent Act Congress added the statutory nonobvious subject matter
requirement, originally expounded in Hotchkiss, which merely codified judicial precedents requiring a
comparison of the subject matter sought to be patented and the prior art, tying patentable inventions
to advances in the art. Although § 103 places emphasis upon inquiries into obviousness, rather than
into "invention," the general level of innovation necessary to sustain patentability
remains [****3]  unchanged under the 1952 Act. Pp. 14-17.
(d) This section permits a more practical test of patentability. The determination of "nonobviousness"
is made after establishing the scope and content of prior art, the differences between the prior art and
the claims at issue, and the level of ordinary skill in the pertinent art. P. 17.

(e) With respect to each patent involved here the differences between the claims in issue and the
pertinent prior art would have been obvious to a person reasonably skilled in that art. Pp. 25-26, 37.

Counsel: Orville O. Gold argued the cause for petitioners in No. 11. With him on the brief was Claude
A. Fishburn. Dennis G. Lyons argued the cause for petitioners in Nos. 37 and 43. With him on the
briefs for petitioner in No. 37 were Victor H. Kramer and Francis G. Cole. On the brief for petitioner in
No. 43 were George H. Mortimer and Howard A. Crawford.

S. Tom Morris argued the cause for respondents in No. 11. With him on the brief were W. W. Gibson
and Thomas E. Scofield. Gordon D. Schmidt argued the cause for respondent in Nos. 37 and 43. With
him on the brief were Carl E. Enggas, Hugh B. Cox and Charles A. Miller.

Briefs of amici curiae in [****4]  No. 11 were filed by Roger Robb for the American Bar Association;
by Stanton T. Lawrence, Jr., for the New York Patent Law Association; by George E. Frost for the
Illinois State Bar Association; by J. Vincent Martin, Alfred H. Evans and Russell E. Schlorff for the State
Bar of Texas; and by Robert W. Hamilton for the School of Law of the University of Texas.

Judges: Warren, Harlan, Brennan, Black, Clark, White, Douglas; Fortas took no part in the

consideration or decision of these cases; Stewart took no part in the consideration or decision of Nos.
37 and 43

Opinion by: CLARK

Opinion
 [*3]  [***548]  [**686]   [461]  MR. JUSTICE CLARK delivered the opinion of the
Court.
After a lapse of 15 years, the Court again focuses its attention on the patentability
of inventions under the standard of Art. I, § 8, cl. 8, of the Constitution and under
the conditions prescribed by the laws of the United States. Since our last expression
on patent validity, A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950), the
Congress has for the first time expressly added a third statutory dimension to the
two requirements of novelty and utility that had been the sole statutory
test [****5]  since the Patent Act of 1793. This is the test of obviousness, i. e.,
whether "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." § 103 of the Patent Act of 1952, 35 U. S. C. § 103 (1964 ed.).
LEdHN[1A]  [1A] LEdHN[2A]  [2A]
The questions, involved in each of the companion cases before us, are what effect
the 1952 Act  [***549]  had upon traditional statutory and judicial tests of
patentability and what definitive tests are now required. We have concluded that
the 1952 Act was intended to codify judicial precedents embracing the principle
long ago  [*4]  announced by this Court in Hotchkiss v. Greenwood, 11 How. 248
(1851), and that, while the clear language of § 103 places emphasis on an inquiry
into obviousness, the general [****6]   [**687]  level of innovation necessary to
sustain patentability remains the same.

I.

The Cases.
(a). No. 11, Graham v. John Deere Co., an infringement suit by petitioners, presents a
conflict between two Circuits over the validity of a single patent on a "Clamp for
vibrating Shank Plows." The invention, a combination of old mechanical elements,
involves a device designed to absorb shock from plow shanks as they plow through
rocky soil and thus to prevent damage to the plow. In 1955, the Fifth Circuit had
held the patent valid under its rule that when a combination produces an "old result
in a cheaper and otherwise more advantageous way," it is patentable. Jeoffroy Mfg.,
Inc. v. Graham, 219 F.2d 511, cert. denied, 350 U.S. 826. In 1964, the Eighth Circuit
held, in the case at bar, that there was no new result in the patented combination
and that the patent was,  [462]  therefore, not valid. 333 F.2d 529, reversing 216
F.Supp. 272. We granted certiorari, 379 U.S. 956. Although we have determined
that =
(b). No. 37, Calmar, Inc. v. Cook Chemical Co., and No. 43, Colgate-Palmolive Co. v. Cook
Chemical Co., both from the Eighth Circuit, were separate declaratory judgment
actions, but were filed contemporaneously. Petitioner in Calmar is the manufacturer
of a finger-operated sprayer with a "hold-down" cap of the type commonly seen on
grocers' shelves inserted in bottles of insecticides and other liquids prior to
shipment. Petitioner in Colgate-Palmolive is a purchaser of the sprayers  [*5]  and uses
them in the distribution of its products. Each action sought a declaration of
invalidity and noninfringement of a patent on similar sprayers issued to Cook
Chemical as assignee of Baxter I. Scoggin, Jr., the inventor. By cross-action, Cook
Chemical claimed infringement. The actions were consolidated for trial and the
patent was sustained by the District Court. 220 F.Supp. 414. The Court of Appeals
affirmed, 336 F.2d 110, and we granted certiorari, 380 U.S. 949. We reverse.
Manifestly, the validity of each of these patents turns on the facts. The
basic [****8]  problems, however, are the same in each case and require initially a
discussion of the constitutional and statutory provisions covering the patentability
of the inventions.

II.

LEdHN[3]  [3] LEdHN[4]  [4]At the outset it must be remembered that the federal
patent power stems from a specific constitutional provision which authorizes the
Congress "To promote the Progress of . . . useful Arts, by securing for limited Times
to . . . Inventors the exclusive Right to their . . . Discoveries." Art. I, § 8, cl.
8.  [***550]  1  The clause is both a grant of power and a limitation. This qualified
authority, unlike the power often exercised in the sixteenth and seventeenth
centuries by the English Crown, is limited to the promotion of advances in the
"useful arts." It was written against the backdrop of the practices -- eventually
curtailed by the Statute of Monopolies -- of the Crown in granting monopolies to
court favorites in goods or businesses which had long before been enjoyed by the
public. See Meinhardt, Inventions, Patents and Monopoly,
pp.  [**688]   [****9]  30-35 (London, 1946). The Congress in the  [*6]  exercise of
the patent power may not overreach the restraints imposed by the stated
constitutional purpose. Nor may it enlarge the patent monopoly without regard to
the innovation, advancement or social benefit gained thereby. Moreover, Congress
may not authorize the issuance of patents whose effects are to remove existent
knowledge from the public domain, or to restrict free access to materials already
available. Innovation, advancement, and things which add to the sum of useful
knowledge are inherent requisites in a patent system which by constitutional
command must "promote the Progress of . . . useful Arts." This is
the standard expressed in the Constitution and it may not be ignored. And it is in this
light that patent validity "requires reference to a standard written into the
Constitution." A. & P. Tea Co. v. Supermarket Corp., supra, at 154 (concurring opinion).

 [****10]  LEdHN[5]  [5]LEdHN[6]  [6]LEdHN[7]  [7]Within the limits of the

constitutional grant, the Congress may, of course, implement the stated purpose of
the Framers by selecting the policy which in its judgment best effectuates the
constitutional aim. This is but a corollary to the grant to Congress of any Article I
power. Gibbons v. Ogden, 9 Wheat. 1. Within the scope established by the
Constitution, Congress may set out conditions and tests for
patentability. McClurg v. Kingsland, 1 How. 202, 206. It is the duty of the
Commissioner of Patents and of the courts in the administration of the patent
system to give effect to the constitutional standard by appropriate application, in
each case, of the statutory scheme of the Congress.
Congress quickly responded to the bidding of the Constitution by enacting the
Patent Act of 1790 during the second session of the First Congress. It created an
agency in the Department of State headed by the Secretary of
State,  [****11]  the Secretary of the Department of War  [*7]  and the Attorney
General, any two of whom could issue a patent for a period not exceeding 14 years
to any petitioner that "hath . . . invented or discovered any useful art, manufacture,
. . . or device, or any improvement therein not before known or used" if the board
found that "the invention or discovery [was] sufficiently useful and important . . . ."
1 Stat. 110. This group, whose members administered the patent system along
with their  [463]  other public duties, was known by its own designation as
"Commissioners for the Promotion of Useful Arts."
Thomas Jefferson, who as Secretary of State was a member of the group, was its
moving spirit and might well be called the "first administrator of our patent
system." See Federico, Operation of the Patent Act of 1790, 18 J. Pat. Off. Soc.
237, 238 (1936). He was not only an  [***551]  administrator of the patent system
under the 1790 Act, but was also the author of the 1793 Patent Act. In addition,
Jefferson was himself an inventor of great note. His unpatented improvements on
plows, to mention but one line of his inventions, won acclaim and recognition on
both sides of the Atlantic. Because [****12]  of his active interest and influence in
the early development of the patent system, Jefferson's views on the general
nature of the limited patent monopoly under the Constitution, as well as his
conclusions as to conditions for patentability under the statutory scheme, are
worthy of note.
Jefferson, like other Americans, had an instinctive aversion to monopolies. It was a
monopoly on tea that sparked the Revolution and Jefferson certainly did not favor
an equivalent form of monopoly under the new government. His abhorrence of
monopoly extended initially to patents as well. From France, he wrote to Madison
(July 1788) urging a Bill of Rights provision restricting monopoly, and as against
the argument that  [*8]  limited  [**689]  monopoly might serve to incite
"ingenuity," he argued forcefully that "the benefit even of limited monopolies is too
doubtful to be opposed to that of their general suppression," V Writings of Thomas
Jefferson, at 47 (Ford ed., 1895).
His views ripened, however, and in another letter to Madison (Aug. 1789) after the
drafting of the Bill of Rights, Jefferson stated that he would have been pleased by
an express provision in this form:
"Art. 9.  [****13]  Monopolies may be allowed to persons for their own productions
in literature & their own inventions in the arts, for a term not exceeding -- years
but for no longer term & no other purpose." Id., at 113.

And he later wrote:

"Certainly an inventor ought to be allowed a right to the benefit of his invention for
some certain time. . . . Nobody wishes more than I do that ingenuity should receive
a liberal encouragement." Letter to Oliver Evans (May 1807), V Writings of Thomas
Jefferson, at 75-76 (Washington ed.).

Jefferson's philosophy on the nature and purpose of the patent monopoly is

expressed in a letter to Isaac McPherson (Aug. 1813), a portion of which we set out
in the margin.  2  He rejected a natural-rights  [***552]  theory in  [*9]  intellectual
property rights and clearly recognized the social and economic rationale of the
patent system. The patent monopoly was not designed to secure to the inventor his
natural right in his discoveries. Rather, it was a reward, an inducement, to bring
forth new knowledge. The grant of an exclusive right to an invention was the
creation of society -- at odds with the inherent free nature of disclosed ideas -- and
was [****14]  not to be freely given. Only inventions and discoveries which
furthered human knowledge, and were new and useful, justified the special
inducement of a limited private monopoly. Jefferson did not believe in granting
patents for small details, obvious improvements, or frivolous devices. His writings
evidence his insistence upon a high level of patentability.
 [****15]  As a member of the patent board for several years, Jefferson saw clearly
the  [464]  difficulty in "drawing a line between the things which are worth to the
public the embarrassment of an exclusive patent, and those which are not." The
board on which he served sought to draw such a line and formulated several rules
which  [**690]  are preserved in  [*10]  Jefferson's correspondence.  3  Despite the
board's efforts, Jefferson saw "with what slow progress a system of general rules
could be matured." Because of the "abundance" of cases and the fact that the
investigations occupied "more time of the members of the board than they could
spare from higher duties, the whole was turned over to the judiciary, to be matured
into a system, under which every one might know when his actions were safe and
lawful." Letter to McPherson, supra, at 181, 182. Apparently Congress agreed with
Jefferson and the board that the courts should develop additional conditions for
patentability. Although the Patent Act was amended, revised or codified some 50
times between 1790 and 1950, Congress steered clear of a statutory set of
requirements other than the bare novelty and utility tests reformulated in
Jefferson's [****16]  draft of the 1793 Patent Act.

III.

The difficulty of formulating conditions for patentability was heightened by the

generality of the constitutional grant and the statutes implementing it, together
with the underlying [****17]  policy of the patent system that "the things which
are worth to the public the embarrassment  [*11]  of an exclusive patent," as
Jefferson put it, must outweigh the restrictive effect of the limited patent monopoly.
The inherent problem was to develop some means of weeding out those inventions
which would not be disclosed or devised but for the inducement of a patent.
 [***553]  This Court formulated a general condition of patentability in 1851
in Hotchkiss v. Greenwood, 11 How. 248. The patent involved a mere substitution of
materials -- porcelain or clay for wood or metal in doorknobs -- and the Court
condemned it, holding:  4

"Unless more ingenuity and skill . . . were required . . . than were possessed by an
ordinary mechanic acquainted with the business, there was an absence of that
degree of skill and ingenuity which constitute essential elements of every invention.
In other words, the improvement is the work of the skilful mechanic, not that of the
inventor." At p. 267.

 [****18]  Hotchkiss, by positing the condition that a patentable invention evidence

more ingenuity and skill than that possessed by an ordinary mechanic acquainted
with the business, merely distinguished between new and useful innovations that
were capable of sustaining a patent and those that were not. The Hotchkiss test laid
the cornerstone of the judicial evolution suggested by Jefferson and left to the
courts by Congress. The language in the case, and in those which followed, gave
birth to "invention" as a word of legal art signifying patentable inventions. Yet, as
this Court has observed, "the truth is the word ['invention'] cannot be defined in
such manner as  [**691]  to afford any substantial aid in determining whether a
particular device involves an exercise of the inventive faculty  [*12]  or
not." McClain v. Ortmayer, 141 U.S. 419, 427 (1891); A. & P. Tea Co. v. Supermarket
Corp., supra, at 151. Its use as a label brought about a large variety of opinions as to
its meaning both in the Patent Office, in the courts, and at the bar.
The Hotchkiss formulation, however, lies not in any label, but in its functional
approach [****19]  to questions of patentability. In practice, Hotchkiss has required
a comparison between the subject matter of the patent, or patent application, and
the background skill of the calling. It has been from this comparison that
patentability was in each case determined.

IV.

The 1952 Patent Act.

LEdHN[8]  [8]The Act sets out the conditions of patentability in three sections. An
analysis of the structure of these three sections indicates that patentability
is  [465]  dependent upon three explicit conditions: novelty and utility as
articulated and defined in § 101 and § 102, and nonobviousness, the new statutory
formulation, as set out in § 103. The first two sections, which trace closely the 1874
codification, express the "new and useful" tests which have always existed in the
statutory scheme and, for our purposes here, need no clarification.  5  The
pivotal  [*13]  section around which the present  [***554]  controversy centers is §
103. It provides:
"§ 103. Conditions for patentability; non-obvious subject  [****20]  matter
HN1  "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  [**692]  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."
 [****21]  [*14]  The section is cast in relatively unambiguous terms. HN2  
Patentability is to depend, in addition to novelty and utility, upon the "non-obvious"
nature of the "subject matter sought to be patented" to a person having ordinary
skill in the pertinent art.
The first sentence of this section is strongly reminiscent of the language in Hotchkiss.
Both formulations place emphasis on the pertinent art existing at the time the
invention was made and both ar.e implicitly tied to advances in that art. The major
distinction is that Congress has emphasized "nonobviousness" as the operative test
of the section, rather than the less definite "invention" language of Hotchkiss that
Congress thought had led to "a large variety" of expressions in decisions and
writings. In the title itself the Congress used the phrase "Conditions for
patentability; non-obvious subject matter" (italics added), thus focusing upon "non-
obviousness" rather than "invention."  6  The Senate and House Reports, S. Rep.
No. 1979, 82d Cong., 2d Sess. (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess.
(1952), reflect [****22]  this emphasis in these terms:
"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  [***555]  been expressed in a
large variety of ways in decisions of  [*15]  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  [466]  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 [****23]  great departures
which have appeared in some cases." H. R. Rep., supra, at 7; S. Rep., supra, at 6.
LEdHN[9]  [9]It is undisputed that this section was, for the first time, a statutory
expression of an additional requirement for patentability, originally expressed
in Hotchkiss. It also seems apparent that Congress intended by the last sentence of §
103 to abolish the test it believed this Court announced in the controversial phrase
"flash of creative genius," used in Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84
(1941). 7
 [****24]  [*16]  It  [**693]  is contended, however, by some of the parties and by
several of the amici that the first sentence of § 103 was intended to sweep away
judicial precedents and to lower the level of patentability. Others contend that the
Congress intended to codify the essential purpose reflected in existing judicial
precedents -- the rejection of insignificant variations and innovations of a
commonplace sort -- and also to focus inquiries under § 103 upon nonobviousness,
rather than upon "invention," as a means of achieving more stability and
predictability in determining patentability and validity.
The Reviser's Note to this section,  8  with apparent reference to Hotchkiss,
recognizes that judicial  [***556]  requirements as to "lack of patentable novelty
[have] been followed since at least as early as 1850." The note indicates that the
section was inserted because it "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." To this same effect are the reports of both Houses, supra, which state that the
first sentence  [*17]  of the section "paraphrases language which
has [****25]  often been used in decisions of the courts, and the section is added
to the statute for uniformity and definiteness."
LEdHN[1B]  [1B] LEdHN[2B]  [2B]
 [****26]  We believe that this legislative history, as well as other sources,  9  
shows that the revision was not intended by Congress to change the general level
of patentable invention. We conclude that the section was intended merely as a
codification of judicial precedents embracing the Hotchkiss condition, with
congressional directions that inquiries into the obviousness of the subject matter
sought to be patented are a prerequisite to patentability.
V.

LEdHN[10]  [10]Approached in this light, the § 103 additional condition, when

followed  [467]  realistically, will permit [****27]  a more practical test of
patentability. The emphasis on nonobviousness is one of inquiry,
not  [**694]  quality, and, as such, comports with the constitutional strictures.

LEdHN[11]  [11]HN3  While the ultimate question of patent validity is one of

law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the § 103 condition, which is but
one of three conditions, each of which must be satisfied, lends itself to several basic
factual inquiries. Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in the pertinent art resolved. Against this
background, the obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give light to the
circumstances  [*18]  surrounding the origin of the subject matter sought to be
patented. As indicia [****28]  of obviousness or nonobviousness, these inquiries
may have relevancy. See Note, Subtests of "Nonobviousness": A Nontechnical
Approach to Patent Validity, 112 U. Pa. L. Rev. 1169 (1964).
LEdHN[12]  [12]This is not to say, however, that there will not be difficulties in
applying the nonobviousness test. What is obvious is not a question upon which
there is likely to be uniformity of thought in every given factual context. The
difficulties, however, are comparable to those encountered daily by the courts in
such frames of reference as negligence and scienter, and should be amenable to a
case-by-case development. We believe that strict observance of the requirements
laid down here will result in that uniformity and definiteness which Congress called
for in the 1952 Act.
LEdHN[13]  [13]While we have focused attention on the appropriate standard to be
applied by the courts, it must be remembered that the primary
responsibility  [***557]  for sifting out unpatentable material lies in the Patent
Office. To await litigation is -- for [****29]  all practical purposes -- to debilitate
the patent system. We have observed a notorious difference between the standards
applied by the Patent Office and by the courts. While many reasons can be adduced
to explain the discrepancy, one may well be the free rein often exercised by
Examiners in their use of the concept of "invention." In this connection we note that
the Patent Office is confronted with a most difficult task. Almost 100,000
applications for patents are filed each year. Of these, about 50,000 are granted and
the backlog now runs well over 200,000. 1965 Annual Report of the Commissioner
of Patents 13-14. This is itself a compelling reason for the Commissioner to strictly
adhere to the 1952 Act as interpreted here. This would, we believe, not only
expedite disposition but  [*19]  bring about a closer concurrence between
administrative and judicial precedent.  10
 [****30]  HN4  Although we conclude here that the inquiry which the Patent
Office and the courts must make as to patentability must be beamed with greater
intensity on the requirements of § 103, it bears repeating that we find no change in
the general strictness with which the overall test is to be applied. We have been
urged to find in § 103 a relaxed standard, supposedly a congressional reaction to
the "increased standard" applied by this Court in its decisions over the last 20 or 30
years. The standard has remained invariable in this Court. Technology, however,
has advanced -- and with remarkable rapidity in the last 50 years. Moreover, the
ambit of applicable art in given fields of science has widened
by  [**695]  disciplines unheard of a half century ago. It is but an evenhanded
application to require that those persons granted the benefit of a patent monopoly
be charged with an awareness of these changed conditions. The same is true of the
less technical, but still useful arts. He who seeks to build a better mousetrap today
has a long path to tread before reaching the Patent Office.

VI.

 [****31]  We now turn to the application of the conditions found necessary for
patentability to the cases involved here:
A. The Patent in Issue in No. 11, Graham v. John Deere Co.
This patent, No. 2,627,798 (hereinafter called the '798 patent) relates to a spring
clamp which permits plow shanks to be pushed upward when they hit
obstructions  [*20]  in the soil, and then springs the shanks back into normal position
when the obstruction is passed over. The device, which we show diagrammatically
in the accompanying sketches (Appendix, Fig. 1), is fixed to the plow frame as a
unit. The mechanism around which the controversy centers is basically a hinge. The
top  [468]  half of it, known as the upper plate (marked 1 in the sketches), is a
heavy metal piece clamped to the plow frame (2) and is stationary relative to the
plow frame. The lower half of the hinge, known as the hinge plate (3), is connected
to the rear of the upper plate by a  [***558]  hinge pin (4) and rotates downward
with respect to it. The shank (5), which is bolted to the forward end of the hinge
plate (at 6), runs beneath the plate and parallel to it for about nine inches, passes
through a stirrup (7), and then continues [****32]  backward for several feet
curving down toward the ground. The chisel (8), which does the actual plowing, is
attached to the rear end of the shank. As the plow frame is pulled forward, the
chisel rips through the soil, thereby plowing it. In the normal position, the hinge
plate and the shank are kept tight against the upper plate by a spring (9), which is
atop the upper plate. A rod (10) runs through the center of the spring, extending
down through holes in both plates and the shank. Its upper end is bolted to the top
of the spring while its lower end is hooked against the underside of the shank.
When the chisel hits a rock or other obstruction in the soil, the obstruction forces
the chisel and the rear portion of the shank to move upward. The shank is pivoted
(at 11) against the rear of the hinge plate and pries open the hinge against the
closing tendency of the spring. (See sketch labeled "Open Position," Appendix, Fig.
1.) This closing tendency is caused by the fact that, as the hinge is opened, the
connecting rod is pulled downward and the spring is compressed. When the
obstruction  [*21]  is passed over, the upward force on the chisel disappears and the
spring pulls the [****33]  shank and hinge plate back into their original position.
The lower, rear portion of the hinge plate is constructed in the form of a stirrup (7)
which brackets the shank, passing around and beneath it. The shank fits loosely
into the stirrup (permitting a slight up and down play). The stirrup is designed to
prevent the shank from recoiling away from the hinge plate, and thus prevents
excessive strain on the shank near its bolted connection. The stirrup also girds the
shank, preventing it from fishtailing from side to side.

In practical use, a number of spring-hinge-shank combinations are clamped to a

plow frame, forming a set of ground-working chisels capable of withstanding the
shock of rocks and other obstructions in the soil without breaking the shanks.

Background of the Patent.

Chisel plows, as they are called, were developed for plowing in areas where the
ground is relatively free from rocks or  [**696]  stones. Originally, the shanks were
rigidly attached to the plow frames. When such plows were used in the rocky,
glacial soils of some of the Northern States, they were found to have serious
defects. As the chisels hit buried rocks, a vibratory motion was set [****34]  up
and tremendous forces were transmitted to the shank near its connection to the
frame. The shanks would break. Graham, one of the petitioners, sought to meet
that problem, and in 1950 obtained a patent, U.S. No. 2,493,811 (hereinafter
'811), on a spring clamp which solved some of the difficulties. Graham and his
companies manufactured and sold the '811 clamps. In 1950, Graham modified the
'811 structure and filed for a patent. That patent, the one in issue, was granted in
1953. This suit against competing plow manufacturers resulted from charges by
petitioners that several of respondents' devices infringed the '798 patent.
 [*22]  The Prior Art.
Five prior patents indicating the state of the art were cited by the Patent Office in
the prosecution of the '798 application. Four of these  [***559]  patents, 10 other
United States patents and two prior-use spring-clamp arrangements not of record
in the '798 file wrapper were relied upon by respondents as revealing the prior art.
The District Court and the Court of Appeals found that the prior art "as a whole in
one form or another contains all of the mechanical elements of the 798 Patent."
One of the prior-use [****35]  clamp devices not before the Patent Examiner --
Glencoe -- was found to have "all of the elements."
We confine our discussion to the prior patent of Graham, '811, and to the Glencoe
clamp device, both among the references asserted by respondents. The Graham
'811 and '798 patent devices are similar in all elements, save two: (1) the stirrup
and the bolted connection of the shank to the hinge plate do not appear in '811;
and (2) the position of the shank is reversed, being placed in patent '811 above the
hinge plate, sandwiched between it and the upper plate. The shank is held in place
by the spring rod which is hooked against the bottom of the hinge plate passing
through a slot in the shank. Other differences are of no consequence to our
examination. In practice the '811 patent arrangement permitted the shank to
wobble or fishtail because it was not rigidly fixed to the hinge plate; moreover, as
the hinge plate was below the  [469]  shank, the latter caused wear on the upper
plate, a member difficult to repair or replace.
Graham's '798 patent application contained 12 claims. All were rejected as not
distinguished from the Graham '811 patent. The inverted position of the shank
was [****36]  specifically rejected as was the bolting of the shank to the hinge
plate. The Patent Office examiner found these to be "matters of design well within
the expected skill of  [*23]  the art and devoid of invention." Graham withdrew the
original claims and substituted the two new ones which are substantially those in
issue here. His contention was that wear was reduced in patent '798 between the
shank and the heel or rear of the upper plate.  11  He also emphasized several new
features, the relevant one here being that the bolt used to connect the hinge plate
and shank maintained the upper face of the shank in continuing  [**697]  and
constant contact with the underface of the hinge plate.
 [****37]  Graham did not urge before the Patent Office the greater "flexing"
qualities of the '798 patent arrangement which he so heavily relied on in the courts.
The sole element in patent '798 which petitioners argue before us is the
interchanging of the shank and hinge plate and the consequences flowing from this
arrangement. The contention is that this arrangement -- which petitioners claim is
not disclosed in the prior art -- permits the shank to flex under stress for
its entire length. As we have sketched (see sketch, "Graham '798 Patent" in
Appendix, Fig. 2), when the chisel hits an obstruction the resultant force (A) pushes
the rear of the shank upward and the  [***560]  shank pivots against the rear of
the hinge plate at (C). The natural tendency is for that portion of the shank
between the pivot point and the bolted connection (i. e., between C and D) to bow
downward and away from the hinge plate. The maximum distance  [*24]  (B) that
the shank moves away from the plate is slight -- for emphasis, greatly exaggerated
in the sketches. This is so because of the strength of the shank and the short --
nine inches or so -- length of that portion of the shank between (C)  [****38]  and
(D). On the contrary, in patent '811 (see sketch, "Graham '811 Patent" in
Appendix, Fig. 2), the pivot point is the upper plate at point (c); and while the
tendency for the shank to bow between points (c) and (d) is the same as in '798,
the shank is restricted because of the underlying hinge plate and cannot flex as
freely. In practical effect, the shank flexes only between points (a) and (c), and not
along the entire length of the shank, as in '798. Petitioners say that this difference
in flex, though small, effectively absorbs the tremendous forces of the shock of
obstructions whereas prior art arrangements failed.
The Obviousness of the Differences.
We cannot agree with petitioners. We assume that the prior art does not disclose
such an arrangement as petitioners claim in patent '798. Still we do not believe that
the argument on which petitioners' contention is bottomed supports the validity of
the patent. The tendency of the shank to flex is the same in all cases. If free-
flexing, as petitioners now argue, is the crucial difference above the prior art, then
it appears evident that the desired result would be obtainable by not boxing the
shank within the confines [****39]  of the hinge.  12  The only other effective place
available in the arrangement was to attach it below the hinge plate and run it
through a  [*25]  stirrup or bracket that would not disturb its flexing qualities.
Certainly a person having ordinary skill in the prior art, given the fact that the flex
in the shank could be utilized more effectively if allowed to run the entire length of
the shank, would immediately see that the thing to do was what Graham did, i. e.,
invert the shank and the hinge plate.
Petitioners' argument basing validity on the free-flex theory raised for the first time
on appeal is reminiscent of Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545
(1938), where the Court [****40]  called such  [470]  an effort "an afterthought.
No such function . . . is hinted at in the specifications of the patent. If this were so
vital an element in the functioning of the apparatus it is strange that all mention of
it was omitted." At p. 550. No "flexing" argument  [**698]  was raised in the
Patent Office. Indeed, the trial judge specifically found that "flexing is not a claim of
the patent in suit . . ." and would not permit interrogation as to flexing in the
accused devices. Moreover, the clear testimony of petitioners' experts shows that
the flexing advantages flowing from the '798 arrangement are not, in fact, a
significant feature in the patent.  13
 [****41]  LEdHN[14]  [14]We  [***561]  find no nonobvious facets in the '798
arrangement. The wear and repair claims were sufficient to overcome  [*26]  the
patent examiner's original conclusions as to the validity of the patent. However,
some of the prior art, notably Glencoe, was not before him. There the hinge plate is
below the shank but, as the courts below found, all of the elements in the '798
patent are present in the Glencoe structure. Furthermore, even though the position
of the shank and hinge plate appears reversed in Glencoe, the mechanical operation
is identical. The shank there pivots about the underside of the stirrup, which in
Glencoe is above the shank. In other words, the stirrup in Glencoe serves exactly the
same function as the heel of the hinge plate in '798. The mere shifting of the wear
point to the heel of the '798 hinge plate from the stirrup of Glencoe -- itself a part
of the hinge plate -- presents no operative mechanical distinctions, much less
nonobvious differences.
B. The Patent in Issue in No. 37, Calmar, Inc. v. Cook Chemical Co., and in No. 43, Colgate-
Palmolive [****42]  Co. v. Cook Chemical Co.
The single patent  14  involved in these cases relates to a plastic finger sprayer with
a "hold-down" lid used as a built-in dispenser for containers or bottles packaging
liquid products, principally household insecticides. Only the first two of the four
claims in the patent are involved here and we, therefore, limit our discussion to
them. We do not set out those claims here since they are printed in 220 F.Supp., at
417-418.
In essence the device here combines a finger-operated pump sprayer, mounted in a
container or bottle by means of a container cap, with a plastic overcap which
screws over the top of and depresses the sprayer (see Appendix,  [*27]  Fig. 3). The
pump sprayer passes through the [****43]  container cap and extends down into
the liquid in the container; the overcap fits over the pump sprayer and screws down
on the outside of a collar mounting or retainer which is molded around the body of
the sprayer. When the overcap is screwed down on this collar mounting a seal is
formed by the engagement of a circular ridge or rib located above the threads on
the collar mounting with a mating shoulder located inside the overcap above its
threads.  15  The overcap, as it is screwed down, depresses the pump plunger
rendering the pump inoperable and when the seal is effected,  [**699]  any liquid
which might seep into the overcap through or around the pump is prevented from
leaking out of the overcap.  [***562]  The overcap serves also to protect the
sprayer head and prevent damage to it during shipment or merchandising. When
the overcap is in place it does not reach the cap of the container or bottle and in no
way engages it since a slight space is left between those two pieces.
 [****44]  The device, called a shipper-sprayer in the industry, is sold as an
integrated unit with the overcap in place enabling the insecticide manufacturer to
install it on the container or bottle of liquid in a single operation in an automated
bottling process. The ultimate consumer simply unscrews and discards the overcap,
the pump plunger springs up and the sprayer is ready for use.
The Background of the Patent.
For many years manufacturers engaged in the insecticide business
had  [471]  faced a serious problem in developing sprayers that could be integrated
with the containers or bottles in which the insecticides were marketed. Originally,
insecticides were applied through the use of tin  [*28]  sprayers, not supplied by the
manufacturer. In 1947, Cook Chemical, an insecticide manufacturer, began to
furnish its customers with plastic pump dispensers purchased from Calmar. The
dispenser was an unpatented finger-operated device mounted in a perforated
cardboard holder and hung over the neck of the bottle or container. It was
necessary for the ultimate consumer to remove the cap of the container and insert
and attach the sprayer to the latter for use.
Hanging the sprayer on the [****45]  side of the container or bottle was both
expensive and troublesome. Packaging for shipment had to be a hand operation,
and breakage and pilferage as well as the loss of the sprayer during shipment and
retail display often occurred. Cook Chemical urged Calmar to develop an integrated
sprayer that could be mounted directly in a container or bottle during the
automated filling process and that would not leak during shipment or retail
handling. Calmar did develop some such devices but for various reasons they were
not completely successful. The situation was aggravated in 1954 by the entry of
Colgate-Palmolive into the insecticide trade with its product marketed in aerosol
spray cans. These containers, which used compressed gas as a propellent to
dispense the liquid, did not require pump sprayers.
During the same year Calmar was acquired by the Drackett Company. Cook
Chemical became apprehensive of its source of supply for pump sprayers and
decided to manufacture its own through a subsidiary, Bakan Plastics, Inc. Initially,
it copied its design from the unpatented Calmar sprayer, but an officer of Cook
Chemical, Scoggin, was assigned to develop a more efficient device. By
1956 [****46]  Scoggin had perfected the shipper-sprayer in suit and a patent was
granted in 1959 to Cook Chemical as his assignee. In the interim Cook Chemical
began to use Scoggin's device and also marketed  [*29]  it to the trade. The device
was well received and soon became widely used.

In the meanwhile, Calmar employed two engineers, Corsette and Cooprider, to

perfect a shipper-sprayer and by 1958 it began to market its SS-40, a device very
much similar to Scoggin's. When the Scoggin patent issued, Cook Chemical charged
Calmar's SS-40 with infringement and this suit followed.

The Opinions of the District Court and the Court of Appeals.

At the outset it is well to point up  [***563]  that the parties have always disagreed
as to the scope and definition of the invention claimed in the patent in suit. Cook
Chemical contends that the invention encompasses a unique combination of
admittedly old elements and that patentability is found in the result produced. Its
expert testified that the invention was "the first commercially successful,
inexpensive integrated shipping closure pump unit which permitted automated
assembly with a container of household  [**700]  insecticide or [****47]  similar
liquids to produce a practical, ready-to-use package which could be shipped without
external leakage and which was so organized that the pump unit with its hold-down
cap could be itself assembled and sealed and then later assembled and sealed on
the container without breaking the first seal." Cook Chemical stresses the long-felt
need in the industry for such a device; the inability of others to produce it; and its
commercial success -- all of which, contends Cook, evidences the nonobvious
nature of the device at the time it was developed. On the other hand, Calmar says
that the differences between Scoggin's shipper-sprayer and the prior art relate only
to the design of the overcap and that the differences are so inconsequential that
the device as a whole would have been obvious at the time of its invention to a
person having ordinary skill in the art.
 [*30]  Both courts accepted Cook Chemical's contentions. While the exact basis of
the District Court's holding is uncertain, the court did find the subject matter of the
patent new, useful and nonobvious. It concluded that Scoggin "had produced a
sealed and protected sprayer unit which the manufacturer need only
screw [****48]  onto the top of its container in much the same fashion as a simple
metal cap." 220 F.Supp., at 418. Its decision seems to be bottomed on the finding
that the Scoggin sprayer solved the long-standing problem that had confronted the
industry.  16  The Court of Appeals also found validity in the [472]  "novel
'marriage' of the sprayer with the insecticide container" which took years in
discovery and in "the immediate commercial success" which it enjoyed. While
finding that the individual elements of the invention were "not novel per se" the
court found "nothing in the prior art suggesting Scoggin's unique combination of
these old features . . . as would solve the . . . problems which for years beset the
insecticide industry." It concluded that "the . . . [device] meets the exacting
standard required for a combination of old elements to rise to the level of
patentable invention by fulfilling the long-felt need with an economical, efficient,
utilitarian apparatus which achieved novel results and immediate commercial
success." 336 F.2d, at 114.
 [****49]  The Prior Art.
Only two of the five prior art patents cited by the Patent Office Examiner in the
prosecution of Scoggin's application are necessary to our discussion, i. e.,
Lohse  [*31]  U.S. Patent No. 2,119,884 (1938) and Mellon U.S. Patent No.
2,586,687 (1952). Others are cited by Calmar that were not before the Examiner,
but of  [***564]  these our purposes require discussion of only the Livingstone U.S.
Patent No. 2,715,480 (1953). Simplified drawings of each of these patents are
reproduced in the Appendix, Figs. 4-6, for comparison and description.
The Lohse patent (Fig. 4) is a shipper-sprayer designed to perform the same
function as Scoggin's device. The differences, recognized by the District Court, are
found in the overcap seal which in Lohse is formed by the skirt of the overcap
engaging a washer or gasket which rests upon the upper surface of the container
cap. The court emphasized that in Lohse "there are no seals above the threads and
below the sprayer head." 220 F.Supp., at 419.
The Mellon patent (Fig. 5), however, discloses the idea of effecting a seal above the
threads of the overcap. Mellon's device, likewise a shipper-
sprayer,  [****50]  differs from Scoggin's in that its overcap  [**701]  screws
directly on the container, and a gasket, rather than a rib, is used to effect the seal.
LEdHN[15A]  [15A]Finally, Livingstone (Fig. 6) shows a seal above the threads
accomplished without the use of a gasket or washer.  17  Although Livingstone's
arrangement was designed to cover and protect pouring spouts, his sealing feature
is strikingly similar to Scoggin's. Livingstone uses a tongue and groove technique in
which the tongue, located on the upper surface of the collar, fits into a groove on
the inside of the overcap. Scoggin employed the rib and shoulder seal in the
identical position and with less efficiency because the Livingstone technique is
inherently a more stable structure, forming an interlock that withstands distortion
of the overcap when subjected to rough handling. Indeed, Cook Chemical has now
incorporated the Livingstone closure into its own shipper-sprayers as had Calmar in
its SS-40.
LEdHN[15B]  [15B]
 [****51]  The Invalidity of the Patent.

Let us first return to the fundamental disagreement between the parties. Cook
Chemical, as we noted at the outset, urges that the invention must be viewed as
the overall combination, or -- putting it in the language of the statute -- that we
must consider the subject matter sought to be patented taken as a whole. With this
position, taken in the abstract, there is, of course, no quibble. But the history of the
prosecution of the Scoggin application in the Patent Office reveals a substantial
divergence in respondent's present position.

As originally submitted, the Scoggin application contained 15 claims which in very

broad terms claimed the entire combination of spray pump and overcap. No
mention of, or claim for, the sealing features was made. All 15 claims were rejected
by the Examiner because (1) the applicant was vague and indefinite as to what the
invention was, and (2) the claims were met by Lohse. Scoggin canceled these
claims and submitted new ones. Upon a further series of rejections and new
submissions, the Patent Office Examiner, after an office interview, at last relented.
It is crystal clear that after the first rejection,  [****52]  Scoggin relied entirely
upon the sealing arrangement as the exclusive patentable difference in his
combination. It is likewise clear that it was  [***565]  on that feature that the
Examiner allowed the claims. In fact, in a letter accompanying the final submission
of claims, Scoggin, through his attorney, stated that "agreement was reached
between the Honorable Examiner and applicant's attorney relative
to limitations which must be in the claims in  [*33]  order to define novelty over the
previously applied disclosure of  [473]  Lohse when considered in view of the newly
cited patents of Mellon and Darley, Jr." (Italics added.)
Moreover, those limitations were specifically spelled out as (1) the use of a rib seal
and (2) an overcap whose lower edge did not contact the container cap. Mellon was
distinguished, as was the Darley patent, infra, n. 18, on the basis that although it
disclosed a hold-down cap with a seal located above the threads, it did not disclose
a rib seal disposed in such position as to cause the lower peripheral edge of the
overcap "to be maintained out of contacting relationship with [the container] cap . .
. when . . . [the overcap] was screwed [on]  [****53]  tightly . . . ." Scoggin
maintained that the "obvious modification" of Lohse in view of Mellon would be
merely to place the Lohse gasket above the threads with the lower edge of the
overcap remaining in tight contact with the container cap or neck of the container
itself. In other words, the  [**702]  Scoggin invention was limited to the use of a
rib -- rather than a washer or gasket -- and the existence of a slight space between
the overcap and the container cap.

LEdHN[16]  [16]LEdHN[17]  [17]It is, of course, well settled that HN5  an invention
is construed not only in the light of the claims, but also with reference to the file
wrapper or prosecution history in the Patent Office. Hogg v. Emerson, 11 How. 587
(1850); Crawford v. Heysinger, 123 U.S. 589 (1887). Claims as allowed must be read
and interpreted with reference to rejected ones and to the state of the prior art;
and claims that have been narrowed in order [****54]  to obtain the issuance of a
patent by distinguishing the prior art cannot be sustained to cover that which was
previously by limitation eliminated from the patent. Powers-Kennedy Co. v. Concrete Co.,
282 U.S. 175, 185-186 (1930); Schriber Co. v. Cleveland Trust Co., 311 U.S. 211, 220-
221 (1940).
 [*34]  Here, the patentee obtained his patent only by accepting the limitations
imposed by the Examiner. The claims were carefully drafted to reflect these
limitations and Cook Chemical is not now free to assert a broader view of Scoggin's
invention. The subject matter as a whole reduces, then, to the distinguishing
features clearly incorporated into the claims. We now turn to those features.

As to the space between the skirt of the overcap and the container cap, the District
Court found:

"Certainly without a space so described, there could be no inner seal within the cap,
but such a space is not new or novel, but it is necessary to the formation of the seal
within the hold-down cap.

"To me this language is descriptive of an element of the patent but not a part of the invention. It is too
simple, really, to require much discussion.  [****55]  In this device the hold-down
cap was intended to perform two functions -- to hold down the sprayer head and to
form a solid tight seal between the shoulder and the collar below. In assembling the
element it is necessary to provide  [***566]  this space in order to form the
seal." 220 F.Supp., at 420. (Italics added.)
The court correctly viewed the significance of that feature. We are at a loss to
explain the Examiner's allowance on the basis of such a distinction. Scoggin was
able to convince the Examiner that Mellon's cap contacted the bottle neck while his
did not. Although the drawings included in the Mellon application show that the cap
might touch the neck of the bottle when fully screwed down, there is nothing --
absolutely nothing -- which indicates that the cap was designed at any time
to engage the bottle neck. It is palpably evident that Mellon embodies a seal formed
by a gasket compressed  [*35]  between the cap and the bottle neck. It follows that
the cap in Mellon will not seal if it does not bear down on the gasket and this would
be impractical, if not impossible, under the construction urged by Scoggin before
the Examiner. Moreover, the [****56]  space so strongly asserted by Cook
Chemical appears quite plainly on the Livingstone device, a reference not cited by
the Examiner.
LEdHN[18]  [18]The substitution of a rib built into a collar likewise presents no
patentable difference above the prior art. It was fully disclosed and dedicated to the
public in the Livingstone patent. Cook Chemical argues, however, that Livingstone
is not in the pertinent prior art because it relates to liquid containers having pouring
spouts rather than pump sprayers. Apart from the fact that respondent made no
such objection to similar  [**703]  references cited by the Examiner,  18  so
restricted a view of the applicable prior art is not justified. The problems
confronting Scoggin and the insecticide  [474]  industry were not insecticide
problems; they were mechanical closure problems. Closure devices in such a closely
related art as pouring spouts for liquid containers are at the very least pertinent
references. See, II Walker on Patents § 260 (Deller ed. 1937).
 [****57]  LEdHN[19]  [19]Cook Chemical insists, however, that the development
of a workable shipper-sprayer eluded Calmar, who had long and unsuccessfully
sought to solve the problem. And, further, that the long-felt need in the industry for
a device such as Scoggin's together with its wide commercial success supports its
patentability. These legal inferences  [*36]  or subtests do focus attention on
economic and motivational rather than technical issues and are, therefore, more
susceptible of judicial treatment than are the highly technical facts often present in
patent litigation. See Judge Learned Hand in Reiner v. I. Leon Co., 285 F.2d 501, 504
(1960). See also Note, Subtests of "Nonobviousness": A Nontechnical Approach to
Patent Validity, 112 U. Pa. L. Rev. 1169 (1964). Such inquiries may lend a helping
hand to the judiciary which, as Mr. Justice Frankfurter observed, is most ill-fitted to
discharge the technological duties cast upon it by patent legislation. Marconi Wireless
Co. v. United States, 320 U.S. 1, 60 (1943). They may also serve to "guard
against [****58]  slipping into use of hindsight," Monroe Auto Equipment Co.
v. Heckethorn Mfg. & Sup. Co., 332 F.2d 406, 412 (1964), and to resist the temptation
to read into the prior art the teachings of the invention in issue.
 [***567]  LEdHN[20]  [20] LEdHN[21]  [21]However, these factors do not, in the
circumstances of this case, tip the scales of patentability. The Scoggin invention, as
limited by the Patent Office and accepted by Scoggin, rests upon exceedingly small
and quite nontechnical mechanical differences in a device which was old in the art.
At the latest, those differences were rendered apparent in 1953 by the appearance
of the Livingstone patent, and unsuccessful attempts to reach a solution to the
problems confronting Scoggin made before that time became wholly irrelevant. It is
also irrelevant that no one apparently chose to avail himself of knowledge stored in
the Patent Office and readily available by the simple expedient of conducting a
patent search -- a prudent and nowadays common preliminary to well organized
research.  [****59]  Mast, Foos & Co. v. Stover Mfg. Co., 177 U.S. 485 (1900). To us,
the limited claims of the Scoggin patent are clearly evident from the prior art as it
stood at the time of the invention.
 [*37]  LEdHN[22]  [22]We conclude that the claims in issue in the Scoggin patent
must fall as not meeting the test of § 103, since the differences between them and
the pertinent prior art would have been obvious to a person reasonably skilled in
that art.

The judgment of the Court of Appeals in No. 11 is affirmed. The judgment of the
Court of Appeals in Nos. 37 and 43 is reversed and the cases remanded to the
District Court for disposition not inconsistent with this opinion.

It is so ordered.
MR. JUSTICE STEWART took no part in the consideration or decision of Nos. 37 and
43.

MR. JUSTICE FORTAS took no part in the consideration or decision of these cases.