Anderson's-Black Rock Inc. v. Pavement Salvage Co
In Anderson's-Black Rock Inc. v. Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), the court struck down a claim that combined a radiant heat burner, a bituminous paving machine, and an asphalt shaper apparatus mounted on the same chassis, each of which was taught by the prior art.
The Court observed that Graham established the guidelines for assessing obviousness, and, applying this analysis, concluded that "the combination was obvious to one with ordinary skill in the art." (Id. at 60, 90 S.Ct. at 307.)
But the Court also commented:
A combination of elements may result in an effect greater than the sum of several effects taken separately. No such synergistic result is argued here. It is, however, fervently argued that the combination filled a long felt want and has enjoyed commercial success. But these matters "without invention will not make patentability." (Id. at 61, 90 S.Ct. at 308.(In Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), the subject matter of the patent before the Court was a device combining two pre-existing elements: a radiant-heat burner and a paving machine.
The device, the Court concluded, did not create some new synergy: The radiant-heat burner functioned just as a burner was expected to function; and the paving machine did the same. The two in combination did no more than they would in separate, sequential operation. Id., at 60-62, 90 S.Ct. 305.
In those circumstances, "while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented," and the patent failed under 103. Id., at 62, 90 S.Ct. 305.
In Anderson's-Black Rock v. Pavement Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), the court held that a patent combining known elements, a radiantheat burner, a spreader, and a tamper and screed, on one chassis was invalid because it was "reasonably obvious to one with ordinary skill in the art." (396 U.S. at 60, 90 S.Ct. at 307.)
In dealing with the issue of obviousness, the court quoted the factual inquiries set out in Graham, and then said: "We conclude further that to those skilled in the art the use of the old elements in combination was not an invention by the obvious-nonobvious standard." (396 U.S. at 62, 90 S.Ct. at 309.)