🚀 go-pugleaf

In article <C0uouu.96I@mentor.cc.purdue.edu>, hrubin@pop.stat.purdue.edu
(Herman Rubin) wrote:
> 
> In article <wingo-130193131057@90.190.20.24> wingo@apple.com (Tony Wingo) writes (assuming I have correctly untangled the attributions):
If you want to claim that their invention was not unique and original,
you'll demonstrate that someone else used it or described it earlier.  The
fact that someone else COULD have come up with it can be said of any
invention, so is not in and of itself sufficient.

If I am correct in interpreting this as a comment on patentability (I am
just entering the thread), it seems to confuse two different
requirements--novelty and non-obviousness (paragraphs 102 and 103 of the
patent act).

The novelty requirement is that the whole idea was not present in one place
in the past (publication, in public use, etc.--I oversimplify a little).
The non-obviousness requirement is that the thing would not have been
obvious to a (hypothetical) person skilled in the relevant art. This is a
much fuzzier concept and allows the argument that the person skilled in the
relevant art would have known about elements of the invention present in
different publications, existing objects, etc. A further ambiguity is that
the "relevant art" may not be obvious--in this case is it cryptography or
number theory?

A further problem is that laws of nature, principles of mathematics, and
the like are not patentable. The Supreme Court, in some opinions, holds
that an invention using a law of nature must be analyzed as if the law of
nature was already known in deciding whether the invention is non-obvious,
hence patentable. The CAFC (where appeals of patent cases go before they
reach the Supreme Court) has generally been more pro-patent, and has I
believe held that while an algorithm, equation, etc. cannot itself be
patentable, its non-obviousness can be used in demonstrating the
non-obviousness of an invention using it (at least, that clearly seems to
be Judge Rich's position).

I hope this helps.

David Friedman
Olin Fellow in Law and Economics
University of Chicago Law School
(312) 702-9589