While the ultimate question of patent validity is one of law, the condition set forth in the Patent Act of 1952, 35 U.S.C.S. § 103, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries: (1) the scope and content of the prior art are to be determined; (2) differences between the prior art and the claims at issue are to be ascertained, and (3) 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 surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.
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.
Were the patents in in question valid?
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.