Rss Feed
Linkedin button

Obviousness (103) Requirement is Un-Constitutional

The generally agreed beginning of section 103 is the Supreme Court case of Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851).  This case first articulated the idea that an improvement that was the subject of a patent had to be more than “the work of the skilful mechanic.”  The case involved making door and other knobs of all kinds of clay used in pottery, and of porcelain. The Supreme Court decision made the common error of pointing out that each of the elements in the invention were individually 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.

Every invention in the history of the world is a combination of known elements/steps.  The reason for this is Conservation of Matter and Energy – you cannot create something from nothing.  This idea is implicit in 35 USC 112, which requires the inventor explain their invention so that one skilled in the art can practice the invention.

Back to Hotchkiss, the ruling states the well known idea that for an invention to be patentable, it must be more than just the work of a skillful mechanic.  Today this is stated as the invention must have taken more than just the work of “one skilled in the art.”  For a very interesting discussion of the history of the nonobviousness requirement see Novelty and the Hotchkiss Standard.

Note that Justice Woodberry ‘s dissent in the Hotchkiss case argued that the statute only required the invention be new and did not say anything about the work of a skillful mechanic.  Was there any justification in the statute for the Supreme Court’s ruling in Hotchkiss?  The 1790 Patent Act stated that the Patent Board was only to grant a patent if the invention was “sufficiently useful and important.”  The patent statute of 1836 also contained a clause that said the Patent Office could deny a patent to an invention the Commissioner deemed to be “insufficiently useful and important.” However, it appears that this part of the statute was almost never invoked.  Either way, the statute did not give this power to the Supreme Court or any other Court.  As a result, Hotchkiss was a clear case of judicial activism.  The Court just made up a requirement that was not in the statute and could not be considered just an interpretation of the law.

Why the Non-obviousness Standard is Unworkable

Words have meaning.  Let’s examine the meaning of the words NOVEL and OBVIOUS in the context of statute.  The key portion of the non-obviousness statute states:

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

Based on the wording and the fact that section 103 was added later than the novelty requirement, logically 103 is intended to be an additional requirement above the novelty requirement.  According to, novelty means “of a new kind; different from anything seen or known before: a novel idea.”  The non-obviousness requirement logically requires something more than an invention be novel.  According to, obvious means, “easily seen, recognized, or understood; open to view or knowledge; evident.”  It is axiomatic to patent law that whether an invention is non-obvious, has to be determined at the time the invention was made or in other words before the invention was known.  How can an invention that has not been created, be easily seen, recognized, or understood; open to view or knowledge or evident (obvious)?  Clearly, an invention that has not been made cannot be open to view and how can you have knowledge of something that does not yet exist?  Evident means, according to, “plain or clear to the sight or understanding.”  Is it any wonder that non-patent attorney judges cannot make sense of Patent Law?  The law is contradictory on its face.

Is Section 103 Constitutional?

The Constitution states at Article I, Section 8, Clause 8:

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

The drafters of the Constitution only defined ONE RIGHT in the Constitution and that was the Right of inventors and authors.  When the founders talked about ‘the right’ they meant a Natural Right.  A natural right is a right that exists, whether government exists or not – of course enforcing that right is another story, which is why governments are instituted among men, see Declaration of Independence.

If the Constitution says that inventors have a right in their discoveries, the first question should be: what is an invention?  Some people have suggested that an ‘invention’ can be anything that Congress decides it is.  But this is clearly nonsense.  If that were the case, then the Constitution would be meaningless.  This is not ‘Alice in Wonderland,’ words have meaning.  So what is an invention?  Inventions belong to the genus or class of human creations.  However, not all human creations are inventions.  For instance, a painting or a musical score is a human creation, but it is not an invention.  Reproduction or making another copy of something is not invention and not a creation in the sense used herein.

We need to differentiate inventions from other human creations.  Inventions belong to the species of human creations that have an objective result.  What do I mean by an objective result?  Examples will probably be the best way to examine this.  A painting is a human creation, but it is not an invention.  A painting has a subjective result – namely the viewer’s reaction.  Logically, all human creations either have an objective or a subjective result or goal, there is no other choice.  This point can appear confusing with respect to mathematics.  Does a Fourier Transform have an objective result?  For patent attorneys, the requirement is commonly referred to as the invention must be ‘useful’ under 101.  The synthesis of a new chemical is not patentable if the inventor cannot describe a practical use (industrial applicability) for the chemical.  The same is true of mathematical formulas.  The definition of an invention requires that it be useful or have, what I call, an objective result, which explains the basis of 101.  A mathematical formula by itself is not useful or does not have an objective result.

An invention is a human creation, which means that a human was the creator of the invention.  That person is called the inventor.  Because we are discussing creation, not reproduction, to be the inventor you have to be first.  That is where the Novelty (102) requirement comes from.  There is nothing in the definition of Invention that implies any sort of non-obviousness requirement or ‘more than a skilled mechanic.’  Neither the Supreme Court nor Congress have the power to ignore the Constitution, which requires that The Exclusive Rights of inventors be secured.  Therefore, 35 USC 103 is unconstitutional.


The origin of Section 103 was a Supreme Court case that failed to follow the law.  The more than a skilled mechanic grew into the nonsense of requiring a flash of genius.  The codification of this bit of judicial activism results in the non-obviousness requirement for patents.  This terminology was double speak: requiring something that was unknown to be apparent.  The definition of invention does not include any sort of non-obviousness requirement and the Constitution requires Congress and the Courts to uphold the exclusive rights of inventors.  As a result, section 103 is unconstitutional.

Words have meanings and judicial activism has consequences.  The non-obviousness standard has inhibited the creation and introduction of new technologies and therefore made us all poorer.  As just one example of this see Robert Kerns, inventor of the intermittent windshield wiper.  Because of the non-obviousness standard, automobile manufacturers were able to steal his invention and drag out court cases for years.  Robert Kerns had a PhD. in electrical engineering and was an intelligence officer in the armed forces as a teenager.  Instead of inventing or teaching, Dr. Kearns spent his life litigating against an auto industry that felt no shame in stealing his invention.  Another tragic example is that of Edwin Armstrong, inventor of the superheterodyne receiver and FM.  RCA’s theft of FM radio destroyed this genius to the determent of all mankind.

1 Comment

  1. [...] An appropriate synonym for flexible here would be arbitrary, based on the judges’ whims.  This means that whether an invention is nonobvious is totally up to the judges’ whims reviewing the case.  This turns the law of patents into nothing more than the dictates of judges and patent examiners.  While the CAFC provided a fairly objective test for 35 USC 103 until the Supremes screwed it up, I believe that 35 USC 103 is itself is inherently arbitrary and unconstitutional. [...]

Leave a Reply

Subscriber Count


Advertise Here

Your Ad

could be right


find out how


Coming Soon