Facts of the Case
Graham v. John Deere Co. was a suit for the infringement of a patent that consisted of a combination of old mechanical elements for a device designed to absorb shock from plow shanks in rocky soil in order 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." Subsequently, the Eighth Circuit held that, since there was no new result in the combination, the patent was invalid. The parties in Calmar, Inc. v. Cook Chemical Co. (No. 37) and Colgate-Palmolive Co. v. Cook Chemical Co. (No. 43) sought a declaration of invalidity and noninfringement of a patent on finger-operated sprayers with a "hold-down" cap issued to Cook Chemical. The District Court and the Court of Appeals sustained the patent.
Questions
Did the Patent Act of 1952 codify the judicial test of obviousness, adding it to the statutory requirements of novelty and utility for the patentability of an invention? Did the Act change the general level required for the patentability of an invention?
Conclusions
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Yes and no. In an opinion delivered by Justice Tom C. Clark, the Court held that the Patent Act of 1952 did not lower the standards required for the patentability of an invention by adding an inquiry into obviousness to the statutory requirements of novelty and utility. The Court found that section 103 of the 1952 Patent Act Congress added the statutory nonobvious subject matter requirement, the determination of which 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. The Court concluded that the patents do not meet the test of the "nonobvious" nature of the "subject matter sought to be patented" to a person having ordinary skill in the pertinent art and were therefore invalid. This affirmed the decision in Graham v. John Deere Co. and reversed the other two.
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