Many inventions that are created are combinations of elements that are already in the public domain. I question that I frequently get asked, is “What is the standard required for patentability if I am combining a couple of elements from different inventions to create something better?”
This blog post by an Austin, TX Patent Attorney discusses an overview of a case that was decided by the Supreme Court in 2007 that addressed this very question.
KSR International Co. v Teleflex Inc.
The subject matter in this case is directed towards Teleflex’s patent #6236,565 that claimed an electronic control attached to a pedal to control an electronic throttle (speed of the vehicle), where the electronic sensor was attached to a fixed pivot and the pedal could move forward and backward.
Prior to Teleflex, pedals for an automobile controlled the speed of the vehicle via mechanical designs where a driver would press down on the pedal. Due to the mechanical nature of the pedals, the pedals were at a fixed positions and could not be elongated or shortened. The prior art also included references directed towards adjustable pedal assemblies with an electronic sensor located in the pedal footpad to detect the pedal’s position.
Shown below is FIGURE 1 from the ‘565 patent as well as the claim in question.
4. A vehicle control pedal apparatus comprising:
a support adapted to be mounted to a vehicle structure;
an adjustable pedal assembly having a pedal arm moveable in for[e] and aft directions with respect to said support;
a pivot for pivotally supporting said adjustable pedal assembly with respect to said support and defining a pivot axis; and
an electronic control attached to said support for controlling a vehicle system;
said apparatus characterized by said electronic control being responsive to said pivot for providing a signal that corresponds to pedal arm position as said pedal arm pivots about said pivot axis between rest and applied positions wherein the position of said pivot remains constant while said pedal arm moves in fore and aft directions with respect to said pivot.
Initially, the district court held that the above patent claim was a mere combination of previous elements in an obvious manor, and ruled in favor of KSR. Then, the court of appeals for the Federal Circuit reversed the district court’s ruling, and ruled in favor of Teleflex. On appeal, the Supreme Court unanimously reversed the judgment of the Federal Circuit that the elements combined in claim 4 were obvious under 35 USC §103.
The Supreme court laid out the standard that a prior combination of old elements with no change to their respective functions, draws into what is already known, and is therefore unpreventable. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950) .
Essentially, the court stated that if a person of ordinary skill can implement a predictable variation of elements, this bars its patentability. With regards to the above claim, the Supreme Court stated that the technological advances in electronics made it obvious that vehicles would develop computer controlled throttles. Further, the court states that it also would have been obvious for a person of ordinary skill in the art to put the sensor on a non-moving part of the pedal such as the fixed pivot.
In view of the above, when inventors draft applications that are combinations of previous elements they should describe how the two elements are coupled together and how the elements interrelate.
For example, a Swiss Army knife contains various elements that are known, knife, scissors, tooth pic, etc. but the way that all of these elements are coupled together in a single packaging would be patentable. Further, a patent attorney should draft the claims with respect to the layering and positioning of the elements when the knife is in the opened and closed position. Although, Swiss Army would not be able to obtain patent protection for merely combining known elements, they could obtain patent protection in how they were combined.
For software patents and mobile applications, it is important to claim the interactions between different network elements based on the known technology at the time. For example, 3G and Wifi are both wireless standards, but these standard use different methods for communicating data over the network. Therefore, if an invention is directed towards communicating data over networks, it may still be patentable if the way the data is communicated is different.
If Teleflex had claimed specifically what types of signals were being sent from the pedal to a computer or that there system was modular based that could be retrofitted, they would have had stronger grounds to argue the patentability of their invention. However, at the same time the scope of their claims would have also been smaller.
In summary, if an inventor is trying to patent an invention that is a mere combination of known elements, it is important to claim how the elements interact with each other, how they are positioned with respect to each other, and when and how communications between different elements are completed.