Hotchkiss v.Greenwood

Supreme Court of the United States,1850

52 U.S.11 How.248

MR.JUSTICE NELSON delivered the opinion of the Court.

The suit was brought against the defendants for the alleged infringement of a patent for a new and useful improvement in making door and other knobs of all kinds of clay used in pottery,and of porcelain [for which defendant raised the defense of invalidity of patent for insufficient inventiveness].

The novelty would consist in the new composition made practically useful for the purposes of life,by the means and contrivances mentioned.It would be a new manufacture,and nonetheless so,within the meaning of the patent law,because the means employed to adapt the new composition to a useful purpose was old,or well known.

But in the case before us,the knob is not new,nor the metallic shank and spindle,nor the dovetail form of the cavity in the knob,nor the means by which the metallic shank is securely fastened therein.All these were well known,and in common use,and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

Now it may very well be,that,by connecting the clay or porcelain knob with the metallic shank in this well known mode,an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance,but from the fact,that the material of which the knob is composed happens to be better adapted to the purpose for which it is made.The improvement consists in the superiority of the material,and which is not new,over that previously employed in making the knob.

But this of itself can never be the subject of a patent.No one will pretend that a machine,made,in whole or in part,of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed,and for that reason better and cheaper,can be distinguished from the old one,or,in the sense of the patent law,can entitle the manufacturer to a patent.

The difference is formal,and destitute of ingenuity or invention.It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended,but nothing more.

It seemed to be supposed,on the argument,that this mode of fastening the shank to the clay knob produced a new and peculiar effect upon the article,beyond that produced when applied to the metallic knob,inasmuch as the fused metal by which the shank was fastened to the knob prevented the shank from acting immediately upon the knob,it being enclosed and firmly held by the metal; that for this reason the clay or porcelain knob was not so liable to crack or be broken,but was made firm and strong,and more durable.

This is doubtless true.But the peculiar effect thus referred to is not distinguishable from that which would exist in the case of the wood knob,or one of bone or ivory,or of other materials that might be mentioned.

Now if the foregoing view of the improvement claimed in this patent be correct,it is quite apparent that there was no error in the submission of the questions presented at the trial to the jury,for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob 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 skillful mechanic,not that of the inventor.

We think,therefore,that the judgment is,and must be

Affirmed.

MR.JUSTICE WOODBURY dissented.

[I]t has been urged here that this invention was merely applying clay and porcelain to a new purpose,and that merely a new purpose,in our patent system,is not entitled to protection.The meaning of this rule,however,as eviscerated from all the cases is that the application of an old machine or old composition of matter before patented to a new object,or what is termed a double use,does not entitle one to a patent connected with this new object,because then there is no new machinery or new combination of old parts,as in merely applying a patent grist mill to a new purpose of grinding plaster.

But it is entirely different if you apply an old earth,or old mechanical power,or old principle in physics,to a new object.There is then a new form adopted,or a new combination for the purpose.And though the elementary material be old,or the elementary principle operating be old,it being difficult to discover a new substance or new elementary principle,yet there is a new shape and consistency and use given,or a new modus operandi, which,if cheaper and better,benefits the world and deserves protection and encouragement.

If these are the effects,however small the skill or ingenuity required to imitate them,they are not excluded from the aid of the laws by either principles or precedents.They are not mere double uses of a previous machine or composition,but a double or additional form or composition of an article for a new purpose.

Here,the new material for a knob,instead of former materials,was more durable than wood,was cheaper than iron,and very beautiful to the eye,instead of looking coarser.Its structure to receive a dovetailed shank and secure it by fused metal,rather than by a hole through and a screw at the end,appears to have been highly important,and if embraced in the patent,as was probably considered in the court below,furnished an additional reason for instructing the jury to consider whether the knob in controversy was not cheaper and better than what preceded it.

Notes and Comments

In the 1853 Hotchkiss v.Greenwood case,a patent on a door knob was challenged for lack of a great invention.It was made of ceramic or porcelain which couldbe prepainted with colorful designs before being heated into completion in a kiln,which proved to be more durable than the conventional wood or metal door knobs that tended to warp or rust due to the element of weather or wear,besides having beautiful looks and shapes.The U.S.Supreme Court took it as mere substitution of one better material over existing ones,which anyone professed in that trade could easily have come up with.This became known as the“Hotchkiss condition”by which an invention,to be patentable,has to be more than just an improvement that could be made by a technician of ordinary skill in the art.

Although,Hotchkiss was considered as the earliest case contemplating this requirement for patentability,this was not a new rule created by court.It was considered as always there,although it had never been specifically spelled out in any of the patent statutes.In fact,even the before the American Revolution,Massachusetts had issued patent requiring that the invention had to be more than just a simple improvement.

Yet,the traditional standard for determining that degree of inventiveness was vague and intriguing to scholars and judges,and frequently called a“judicial play thing”when applied by courts in a way like“I know it when I see it.”In some cases,the standard was described as a“stroke of genius,”like the“Eureka!”moment when Archimedes made his great discovery.

This turned out to be too high a standard which would block most inventions,especially those made after long and hard study of a problem whose solution has come only as a result of many failed experiments,such as those in chemistry and biological studies.

“Eureka!”

In 1952,after more than a century and a half of patent practice since the first version of the patent law,and due to persistent lobbing work by attorney (later federal circuit judge) Rich and Federico,it was eventually added to the patent statute as § 103,as a third patentability requirement after“new and useful.”Since then,it has remained basically unchanged except under the America Invents Act of 2011 in minor ways in line with § 102.The following chart lists the new and old versions of section 103.

35 U.S.C.§ 103 under AIA and Pre-AIA Compared

Under America-Invents Act

35 U.S.C.§ 103 Conditions for patentability; non-obvious subject matter.

A patent for a claimed invention may not be obtained,notwithstanding that the claimed invention is not identically disclosed as set forth in section 102,if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.Patentability shall not be negated by the manner in which the invention was made.

[Effective as of March 16,2013]

Pre-AIA version 35 U.S.C.§ 103 Conditions for patentability; non-obvious subject matter.

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102,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 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.

((b) (c) are some exceptions)

[Still applicable to those applications filed before March 16,2013.]