Anderson's-Black Rock, Inc. v. Pavement Salvage Co.. Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969), is a 1969 decision of the United States Supreme Court on the legal standard governing the obviousness of claimed inventions. It stands for the proposition that, when old elements are combined in a way such that they do not interact in a novel, unobvious way, then the resulting combination is obvious and therefore unpatentable.

Background

The patent sought to solve a problem in paving asphalt roads—the joint between the new section and old, cold sections tends to bond poorly. Previously, one machine spread and shaped the new deposit of asphalt and a second machine contained a radiant-heat burner, which softened cold asphalt. The claimed invention combined on one machine chassis the spreading and shaping equipment along with a radiant-heat burner.

The defendant highway constructor's alleged infringement resulted from its placing of a radiant-heat burner on the front of a standard paving machine. This allowed "its machine to perform the same functions with the same basic elements as those described in [the] patent."

Proceedings in lower courts

District court ruling

The patent owner, Pavement Salvage Company, sued the highway constructor, Anderson's-Black Rock, in the United States District Court at Charleston, West Virginia. The district court held the claimed invention obvious and the patent invalid, because (according to the court of appeals) it believed that it was known that the answer to the problem of cold joints lay in heat treatment and that a generator of the type described by the inventor "would do the job."

The district judge concluded:

Court of appeals ruling

The patent owner appealed and the Fourth Circuit reversed (2-1). It held:

One judge dissented. He said, "Nor is it demonstrated to my satisfaction that the combination on one chassis of the paving machine and heat generator is necessary to produce the desired result. Yet, the combination is held patentable, though for all we know the same desired result may be achieved by two machines juxtaposed and separately propelled."

Supreme Court ruling

The Supreme Court, without dissent, reversed the judgment of the Fourth Circuit and reinstated the judgment of the district court. Justice William O. Douglas delivered the opinion of the Court.
 
The Court agreed with the reasoning of the district court and the court of appeals dissent that combining the claimed elements of the patent was obvious: "A separate heater can also be used in conjunction with a standard paving machine to eliminate the cold joint, and in fact is so used for heating the transverse joints of the pavement."

The Court continued, "The combination of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a 'new or different function. The Court also dismissed the Fourth Circuit's reliance on commercial success, because "those matters without invention will not make patentability."

Pointing to the Supreme Court's 1966 ruling in Graham v. John Deere Co., the Court said, as that case held, that "[t]he patent standard is basically constitutional, Article I, § 8, of the Constitution," and thus under that grant of power authorizing Congress "to promote the Progress of . . . useful Arts" Congress may not "enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. . . . This is the standard expressed in the Constitution and it may not be ignored."

Therefore, based on the methodology commanded in the Graham case, the Court held the claimed combination obvious:

Subsequent developments 

The United States Court of Appeals for the Federal Circuit for many years ignored and refused to cite or follow the Black Rock decision. But the 2007 Supreme Court decision in KSR v. Teflex, which cited and followed Black Rock for the proposition that "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions," gave the Federal Circuit "forceful instruction" to change its approach. After the Supreme Court granted certiorari in the KSR case, the Federal Circuit began to defer to the Black Rock decision.

References

External links
 

1969 in United States case law
United States patent case law
United States Supreme Court cases
United States Supreme Court cases of the Burger Court