More on KSR

Mark Smith at Techlawforum wrote of KSR v. Teleflex: The KSR case may turn upon a little discussed case from 1976, Sakraida v. Ag Pro, Inc. In that decision, Justice Brennan declared a combination patent for removing cow manure from the floor of a dairy bar obvious. The language used is a stark contrast to the Federal Circuit’s “teach, suggest, motivate” test. In fact, the Court seems to require the patentee to satisfy a MUCH higher standard.

IPBiz is not sure what Smith means by "little discussed," because Sakraida is much discussed in the KSR briefs. The relevant text in Sakraida is:

We cannot agree that the combination of these old elements to produce an abrupt release of water directly on the barn floor from storage tanks or pools can properly be characterized as synergistic, that is, "result[ing] in an effect greater than the sum of the several effects taken separately." Anderson's-Black Rock v. Pavement Co., 396 U.S. 57, 61 (1969). Rather, this patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations. Such combinations are not patentable under standards appropriate for a combination patent. Great A. & P. Tea Co. v. Supermarket Corp., supra; Anderson's-Black Rock v. Pavement Co., supra. Under those authorities this assembly of old elements that delivers water directly rather than through pipes or hoses to the barn floor falls under the head of "the work of the skillful mechanic, not that of the inventor." Hotchkiss v. Greenwood, 11 How., at 267. Exploitation of the principle of gravity adds nothing to the sum of useful knowledge where there is no change in the respective functions of the elements of the combination; this particular use of the assembly of old elements would be obvious to any person skilled in the art of mechanical application. See Dann v. Johnston, ante, at 229-230.

Though doubtless a matter of great convenience, producing a desired result in a cheaper and faster way, and enjoying commercial success, Dairy Establishment "did not produce a `new or different function' . . . within the test of validity of combination patents." Anderson's-Black Rock v. Pavement Co., supra, at 60. These [425 U.S. 273, 283] desirable benefits "without invention will not make patentability." Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S., at 153 . See Dann v. Johnston, ante, at 230 n. 4.

The juxtaposition of "not synergistic" followed by the words --Rather, this patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations-- is puzzling.

The opinion in Anderson's Black Rock was by Justice Douglas, someone who was not patent friendly. Douglas wrote:

Each of the elements combined in the patent was known in the prior art. It is urged that the distinctive feature of the patent was the element of a radiant-heat burner. But it seems to be conceded that the burner, by itself, was not patentable. And so we reach the question whether the combination of the old elements created a valid combination patent.

(...)

A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here. It is, however, fervently argued that the combination filled a long felt want and has enjoyed commercial success. But those matters "without invention will not make patentability." A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 153.

Synergism was NOT an issue in Anderson's Black Rock.

See also

Obviousness: KSR today, Sakraida, "that cow shit case," yesterday

http://ipbiz.blogspot.com/2006/11/ksr-can-one-have-settled-expectation.html

***Also on the issue of definitions

Andy Gibbs discusses innovation:

For the purposes of this paper, innovation is defined as the “Advancement of Applied Technology”.

At the lowest level, innovation is a process used by engineers and inventors. However, from a higher level, innovation is a process that can drive a corporation’s overall process of R & D and corporate strategic development.

Still further, the innovation process spills over into many operational areas within an organization other than R&D, namely, marketing, legal, finance, and corporate strategy.