383 U.S. 1, 5 (1966)
In 1953, William T. Graham received U.S. Patent No. 2,627,798 for a spring clamp device designed to absorb shock in agricultural plows when the shank strikes an obstruction in rocky soil.1
The device features a hinge connecting the plow shank to the frame, with the hinge plate positioned below the frame and the shank bolted to it, allowing greater flexing along the shank's length compared to prior designs.2 Graham had previously obtained U.S. Patent No. 2,493,811 in 1950 for a similar but differently arranged clamp.3
Separately, in 1959, Baxter I. Scoggin, Jr., received U.S. Patent No. 2,870,943, assigned to Cook Chemical Co., for a plastic finger-operated sprayer with a hold-down overcap for use on insecticide bottles.4 The device integrates a pump sprayer with an overcap that screws onto a collar, forming a seal above the threads via a rib and shoulder while leaving space between the overcap and container cap, enabling automated assembly and leak-proof shipment.5
These patents became the subject of infringement and declaratory judgment actions.6 In the Graham case, the Fifth Circuit had upheld the patent's validity in an earlier proceeding.7 The Eighth Circuit invalidated it in the suit against John Deere Co.8
In the Calmar and Colgate-Palmolive cases against Cook Chemical, the Eighth Circuit upheld the Scoggin patent after the District Court sustained it.9 The prior art included Graham's own earlier patent and the Glencoe clamp device.
For the sprayer, the prior art included patents such as Lohse No. 2,119,884, Mellon No. 2,586,687, and Livingstone No. 2,715,480.10 The Patent Office had examined the applications, with Graham amending claims and Scoggin relying on the sealing features after initial rejections.11
The Supreme Court granted certiorari in these cases to address the application of the obviousness standard under the 1952 Patent Act.12
Whether the Patent Act of 1952 altered the standard of patentability previously established by Hotchkiss v. Greenwood?13
The 1952 Patent Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood.14 An invention must not be obvious to one skilled in the art.15 While the Act may have sharpened the definition, it did not lower the level of the patentability standard.16
No. The Senate and House Reports reflect that section 103 should have no effect on the decisions of the courts in cases of this nature.17 The section was added to the statute for uniformity and definiteness without changing the general level of patentable invention.18 Applying this rule to the established facts, the Graham patent and the Scoggin patent were both evaluated under the same obviousness principle derived from Hotchkiss as had existed before the 1952 Act.19 The Court traced the history from the Statute of Monopolies through Jefferson's views and the Hotchkiss substitution of materials test to confirm continuity in the standard.20
The Patent Act of 1952 did not alter the standard of patentability previously established by Hotchkiss v. Greenwood.21
Whether U.S. Patent No. 2,627,798 issued to Graham satisfied the nonobviousness requirement under 35 U.S.C. § 103?22
Under 35 U.S.C. § 103, a patent may not be obtained 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.23
No. The prior art included Graham's own earlier 1950 patent and the Glencoe clamp device which contained all of the mechanical elements of the 1953 patent. The only differences were the placement of the hinge plate on the underside of the frame and the use of a bolt and nut rather than riveting the spring to the hinge.24 These changes would have been obvious to one skilled in the art of designing agricultural implements.25 The tendency of the shank to flex is the same in all cases.26
The arrangement produced no new or different function but was a mere aggregation.27 The Court applied the Graham factors to these specific facts and found the patent invalid.28
U.S. Patent No. 2,627,798 issued to Graham did not satisfy the nonobviousness requirement under 35 U.S.C. § 103 and is invalid.29
Whether U.S. Patent No. 2,870,943 issued to Scoggin and assigned to Cook Chemical satisfied the nonobviousness requirement under 35 U.S.C. § 103?30
Under 35 U.S.C. § 103, a patent may not be obtained 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.
No. The prior art included the Lohse, Mellon, and Livingstone patents which disclosed shipper-sprayer sealing mechanisms.31 The only differences were the use of a rib seal above the threads and a slight space between the overcap and the container cap.32 These features would have been obvious to one skilled in the art of designing plastic dispensing devices.33 Livingstone disclosed a seal above the threads without a gasket.34
The space was necessary to form the seal but not novel.35 The prosecution history shows Scoggin relied on these features after initial rejections yet they were rendered apparent by the prior art at the time of the invention.36 The Court applied the Graham factors to these specific facts and found the patent invalid.
U.S. Patent No. 2,870,943 issued to Scoggin and assigned to Cook Chemical did not satisfy the nonobviousness requirement under 35 U.S.C. § 103 and is invalid.37
Whether the factual inquiries required to determine obviousness under § 103 of the Patent Act of 1952 are the scope and content of the prior art, the differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art, and objective evidence of nonobviousness?38
While the ultimate question of patent validity is one of law, the § 103 condition lends itself to several basic factual inquiries.39 The scope and content of the prior art are to be determined.40 Differences between the prior art and the claims at issue are to be ascertained.41 The level of ordinary skill in the pertinent art is resolved.42 Against this background the obviousness or nonobviousness of the subject matter is determined with secondary considerations such as commercial success, long-felt but unsolved needs, and failure of others utilized as indicia.43
Yes. These inquiries known as the Graham factors must be made in every case before the legal conclusion on obviousness is reached.44 Applying this rule to the established facts in the Graham plow case, the scope of prior art encompassed the inventor's 1950 patent and the Glencoe device. The differences were the inverted shank position and bolted connection.45
The level of skill was that of an agricultural implement designer.46 No secondary evidence supported nonobviousness.47 In the Scoggin sprayer case the scope of prior art encompassed Lohse, Mellon and Livingstone.48 The differences were the rib seal and space between overcap and cap.49
The level of skill was that of a designer of plastic dispensing devices.50 Commercial success did not overcome obviousness from the prior art.51
The factual inquiries required to determine obviousness under § 103 of the Patent Act of 1952 are the scope and content of the prior art, the differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art, and objective evidence of nonobviousness.52