INDEX OF SUPPLEMENTAL LETTER I. Exact reading of full text of section 103 urged by witness. No change in II. Objective test and meaning of an application to example. "Objective" III. Advantages of objective test to following: Patent Office, inventor, patent IV. Objections to subjective test: Indefiniteness, speculation-double mental V. Assurance courts will follow objective or any test enacted into law by VII. Answer to two contentions disapproving objective test. cases. * * * IX. Rebuttal of allegation that courts have not applied the objective X. Conclusion. I. EXACT READING OF FULL TEXT OF SECTION 103 PROPOSED Witness desires section 103 of H. R. 3760 to read: "SEC. 103. CONDITIONS FOR PATENTABILITY; NONOBVIOUS SUBJECT-MATTER AND NEW "Independently of and apart from the above, a patent may be obtained for II. OBJECTIVE TEST-MEANING OF AND APPLICATION TO EXAMPLES "Objective": (Webster's New International Dictionary). Witness gave example of an invention comprising a screw-driver tool being fact external to "feelings" of examiner or judge. It is not a question of whether The barb wire gives the affirmative of the application of the objective test. The functional relation of holding the barb at 90 degrees to the carrier wire by a bearing formed by two wraps of the wire of the barb was new. And the Supreme Court held the patent valid. III. ADVANTAGES OF OBJECTIVE TEST TO FOLLOWING (1) Inventor: May know with far greater certainty whether his contribution. is one to be awarded a patent and if a patent is allowed whether it probably will be sustainable in court, and this before he spends years of his life and great sums of money in its development and marketing. At present, he may be met with a court decision stating with no greater logical basis, than "We think the invention is obvious to those skilled in the art." (2) Patent Office: The objective test affords so excellent a criterion for a precise definition of a patentable invention that burden of Patent Office will be greatly lightened. (3) Solicitor: Serves as a measure or criterion in advising as to patentable novelty and also in his constructive work of preparing specification and claims of patent applications. (4) Judges of Federal courts: Supplies a criterion defined from judicial authority to aid them to sound and consistent judgment in patent cases. (5) Public: Public in adopting machines or inventions can know whether it is infringing or not with far greater certainty. This means less litigation. Application of the objective test has advantage of a two-volume text illustration, derivation, and application to adjudicated cases. IV. OBJECTIONS TO SUBJECTIVE TEST, I. E., OBVIOUSNESS, WHICH IS THE TEST OF SECTION 103 AS PRESENTLY SET FORTH Indefiniteness: What is obvious to one man is not obvious to another. After being taught how to solve a problem, of course it is "obvious." Surely, such is not a reliable criterion to test whether a contribution is patentable. Yet this is what the committee is asked to enact into law as the only measure of patentability. Note well witness would let section 103 remain as is but would add the objective test. Example: Inventor files patent application. Examiner replies rejecting claims thereof, stating "In view of prior art cited references, it is obvious to those skilled in the art to do what applicant proposes." How is the Solicitor to answer on rational basis such contention which amounts to nothing more than "we think anyone skilled in the art could overcome the problem you faced." How can examiner know that--it is only opinion. All are entitled to opinions. Solicitor may reply "Patents you have cited are all old and no one member has solved the problem-same has awaited solution by applicant and so it could not be obvious after so many years." Assuming finally patent is allowed: Applicant is happy and with it induces friends to subscribe funds for development and marketing. After say eight years, a rival sees the inventor is making good and he infringes, and after expensive court contest of two or more years- -court says "we believe the invention is obvious," or as sometimes stated, "is within the skill of the art" or "does not rise to the dignity of an invention" or "is only mechanical skill"-all subjective answers. Surely one who thus has been led into losing years of his life and his own money and that of his friends, cannot find much incentive in a patent system based upon a test so lacking in logical basis. Speculation: In applying "obviousness" test, one speculates upon whether the relationship is obvious or not obvious to those skilled in the art-a double mental assumption or imagining. First, one must imagine one possessed of the skill of those in a prior art, and then second, he must imagine whether such a one would deem the invention obvious. He must reach the conclusion in his feelings (being a subjective process) about obviousness after he has been taught the solution by the inventor whose contribution he is judging-meantime trying to keep such instruction out of his mind. Surely this adds up to a real mental gymnastic trick. All such indefiniteness and speculation is avoided by the objective test. V. ASSURANCE COURTS WILL FOLLOW OBJECTIVE OR ANY TEST ENACTED INTO LAW BY CONGRESS No one can give such assurance, it is respectfully submitted. * * To escape the utter confusion depicted by Justice Jackson when he states * that the only patent that is valid is one which this court has not been able to get its hands on" (80 U. S. P. Q. p. 36). It is to be devoutly expected that the courts will welcome a reliable test founded on logic and derived from judicial authority. Also, we may still trust that stare decisis will contribute to uniformity of judicial determination when a criterion is presented which harmonizes the Supreme Court decisions prior to requirment for writ of certiorari. VI. "INDEPENDENTLY OF, AND APART FROM Inserted to make objective test separate from subjective test in first paragraph. Thus, an invention which does not have a new functional relationship may still be adjudged patentable if deemed nonobvious. An invention which has new functional relationship as set forth in second paragraph cannot be held nonpatentable because deemed to be obvious, since it fulfills the requirement of the restrictive objective test which is "independent of and apart from * VII. ANSWER TO TWO CONTENTIONS DISAPPROVING OBJECTIVE TEST First, in substance, "not sure that objective test is the solution." No other test was suggested deemed to be better. It is submitted that so long as the objective test offers a great improvement over the subjective test and is the only one proposed derived from judicial authority and is the only one having a published text book fully setting forth and applying the test, then such objection is outweighed. Second, in substance, "The proposal would require the Patent Office to grant a patent and presumably the courts to sustain it if it involved any new functional relationship however minor or insignificant it might be." No example of any such minor or insignificant invention was given. Would the barb wire case be of such "minor" or "insignificant" character? Here we have a subjective approach in the question of what is "minor" or "insignificant." Assuming there is such: It is submitted that any new functional relationship which such objector may be fearing would be one which would produce a result which could readily be obtained by a nonequivalent device. However, this may be the increased advantages of the objective over the subjective test, it is submitted, well warrants its inclusion as suggested herein. Moreover, it is submitted, it is precisely where the change is small as in the barb wire case that the inventor needs the approximation to a criterion for precise definition of a patentable invention as afforded by the objective test proposed, and thus inventions of the inherent order of the barb wire case will be protected. VIII. THE SUPREME COURT IN DECISION PRIOR TO WRIT OF CERTIORARI NEVER HELD PATENT CLAIM VOID FOR LACK OF PATENTABLE INVENTION EXCEPT WHERE NO NEW FUNCTIONAL RELATIONSHIP WAS ESTABLISHED. *** OBJECTIVE TEST HARMONIZES THE CASES The following paragraph supplies an assurance drawn from the history of the Supreme Court patent determinations which constitutes a most unique endorsement of said test. "In view of the fact that not a century has elapsed since the Federal courts began to consider questions arising under patents for invention, and that in every branch of law, much time and long experience are ordinarily required for the determination of principles which are to settle its uniform administration; it may be regarded as remarkable, not to say marvelous; that the Supreme Court has never yet decided a patent claim to be void for lack of patentable invention in its subject matter, except where no new functional relationship was established by or between the things claimed. It is true that the reason from time to time assigned for denying patentablility to the various alleged inventions involved in the 131 cases cited as belonging to this category, have not been explicitly stated in the judicial opinions rendered thereon, to be grounded upon the absence of any new functional relationship in the subject matter claimed; but it is manifest from careful analysis that the entire series of such cases may be satisfactorily explained and harmonized by the application of such a test. They were all decided within a period of 75 years, 1850-1925; and they serve to show how successful the conservative attitude of the Supreme Court has been in preserving the rights to genuine inventors, notwithstanding the difficulties attending the discrimination of the new from the old. (Patentability and Patent Interpretation, page 170.) IX. REBUTTAL OF ALLEGATION THAT COURTS HAVE NOT APPLIED THE OBJECTIVE TEST— ON CONTRATY COURTS HAVE APPLIED SAME AND SPOKEN IN TERMS OF FUNCTIONS AND SPECIFICALLY APPROVED GEORGE L. ROBERTS' STATEMENT OF THE OBJECTIVE TEST N. B.-How Court in these cases look at "duty" or "office" or "function" which the elements or factors perform in an invention and compares them with functions of factors of prior devices rather than ask, Is this "obvious"? (Italics are ours unless otherwise indicated.) The Supreme Court in cases cited and extracted below has expressly analyzed the differences between elements of prior art and invention before the Court and has used the term "functions" in so doing. Moreover, the District Court in Submarine Signal Corp. v. General Radio Co. et al. (D. C. Mass. July 20, 1926) states that the test of invention is objective, criticizes the subjective test as impractical and states (citing_with_approval) that the court has considered the unpublished notes of George L. Roberts, Esq. of the Suffolk bar. It is interesting to note parenthetically that, in this case, the winning plaintiff was represented by the eminent law firm of which three distinguished members on the coordinating committee formulating the present bill are members or associates. The objective test was good law then and it is submitted it is good law now and should be included in the present bill. This Submarine Signal Corp. case will be quoted first, since it is so directly in point. Submarine Signal Corp. v. General Radio Co. et al. (D. C. Mass., July 20, 1926. 14 F. 2d 178) (courts and other tribunals have adopted and cited this case with approval in many cases): "The defendants rely principally upon the Berggraf device as showing an anticipation of the plaintiff's invention. They adopt the conventional method of testing an invention, by contending that a person skilled in the art, having this device at hand, could produce the plaintiff's apparatus by certain changes. (That is it would be 'obvious' insert ours). This contention shows the unsatisfactory nature of the 'skilled mechanic' criterion of invention. "A test of invention may be either subjective or objective. We may determine either the novelty of an idea or the novelty of the result of this idea. The first test is impractical. Psychology is not yet so exact a science as to allow us to classify and arrange in order of importance the ideas of the human brain. Nor does it assist us to substitute for the brain of the patentee, whose idea we are criticizing, the brain of that imaginary person of the patent law, the skilled mechanic. The test is still that of the relative importance of ideas. "George L. Roberts, Esq., of the Suffolk bar, has considered this subject in an unpublished treatise which I have been privileged to study. He shows that the true test of invention is the novelty of the result, and that this result must be criticized by comparing it with the machines, processes or methods known before. The test is an objective one. If the result of an idea is a machine or process involving a new function or an old function arrived at by new means, the embodiment of the idea is patentable. In an exhaustive survey of all the cases relating to the question of patentable novelty in the Supreme Court of the United States, from the earliest times down to 1915, Mr. Roberts has shown that the test above suggested is consistent with them all, with three exceptions, which he regards as anomalous." The above speaks most clearly and positively in favor of the objective test. Since the objective test has thus been made a part of the law by judicial decision, why should it not now be embodied in the statutory law? Justice Clifford. Union Paper Bag Machine Co. v. Murphy (97 U. S. 120, 125 (24th ed. 935)): "In determining the question of infringement, the Court or jury, as the case may be, are not to judge about similarities or differences by the names of things, but are to look at the machines or their several devices or elements in the light of what they do, or what office or function they perform, and how they perform it, and to find that one thing is substantially the same as another, if it performs substantially the same function in substantially the same way to obtain the same result, always bearing in mind that devices in a patented machine are different in the sense of the patent law when they perform different functions or in a different way, or produce a substantially different result." (How well these words fit the analysis given relative the barb wire fence and the brace and bit-screw driver illustration given by witness.) The above language of Supreme Court in testing for patentable novelty in determining infringement was applied in Hiler Audio Corporation v. General Radio Co. (26 F. (2d) 475, 479 D. C. 1928). "Notwithstanding the slight mechanical difference in construction, the two devices perform the same function in the same way, and accomplish substantially identical results. The two cores in the defendant's impedance coupler are the mechanical equivalents of the single core in plaintiff's unit." 66* ** The testimony shows that the iron portion of the core structure between the coils of the defendant's unit function as a magnetic path * * * "" N. B.-How Court is comparing function of element by element, is not speculating whether it is "obvious" or whether it is "only mechanical skill." Who knows, the boundaries of these subjective terms? No one, it seems clear. Judge Brewster endorsed the obective test explained above by Judge Lowell in this manner: "I also derive assistance from the learned opinion of Judge Lowell in Submarine Signal Corp. v. General Radio Co. ((D. C.) 14 F. 2d 178, 181), wherein he points out that the "true test of invention is the novelty of the result, and that this result must be criticized by comparing it with the machines, or processes, or methods known before. The test is an objective one. If the result of an idea is a machine or process involving a new function, or an old function arrived at by new means, the embodiment of the idea is patentable." The court proceeds comparing and using term "functions." "Wright's only invention, then, was in the combination of the cylindrical guide with the trough shown in the Farrar patent. Did this accomplish a new and valuable result it is quite possible that a patent therefor might have been sustained, but we do not find this to be the case. The cylindrical guide performs the same functions as in the prior patents: the trough in which the connecting rod works in the Farrar patent, is practically the same as in the Wright patent, and the combination is a mere aggregation of their respective functions, if the combination of the trough and cylindrical guide of the Wright patent gives greater lightness and strength to the frame than the combination of the trough and the flat guides of the Farrar patent, it is a mere matter of degree, a carrying forward of an old idea, a result, perhaps, somewhat more perfect than had theretofore been attained, but not rising to the dignity of invention. * * Reckendorfer v. Faber (92 U. S. 347, 358): After comparing duty of lead and the eraser of a pencil, the court stated: * * There is no relation between the instruments in the performance of their several functions, and no reciprocal action, no parts used in common." Richards v. Chase Elevator Co. (158 U. S. 299, 302, 303, (1894)): 66% ** So long as each element performs some old and well-known function, the result is not a patentable combination, but an aggregation of ele ments. * "Not a new function or result is suggested by the combination in question * * *"" Grinnell Washing Machine Co. v. Johnson Co. (247 U. S. 426, 433, (1917)): "In Specialty Mfg. Co. v. Fenton Metallic Mfg. Co. (174 U. S. 492, 498), the rule was again tersely stated: "Where a combination of old devices produces a new result, such combination is doubtless patentable; but, where the combination is not only of old elements but of old results, and no new function is evolved from such combination, it falls within the rulings of this Court in Hailes v. Van Wormer (20 Wall. 353, 368), etc. (citing cases). "Applying the rule thus authoritatively settled by this Court, we think no invention is shown in assembling these old elements for the purposes declared. No new function is 'evolved from this combination'; the new result, so far as one is achieved, is only that which arises from the well-known operation of each one of the elements." Lincoln Engineering Co. v. Stewart-Warner Corp. (303 U. S. 545, 549 (1937)): 66* * * The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation |