Appeal 2007-0561
Application 10/689,465
1 Court’s decision in KSR International Co., supra, which explained that the Federal
2 Circuit has been applying the “teaching, suggestion, and motivation” inquiry,
3 otherwise known as the “TSM test,” too rigidly and not in a manner consistent
4 with the expansive and flexible approach for determining obviousness as was set
5 forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). The
6 applicants’ arguments reflect the same rigid and inflexible approach to considering
7 teaching, suggestion, and motivation, that the Supreme Court explained in KSR
8 International Co. as improper. The following discussion by the Supreme Court, in
9 KSR International Co., 127 S. Ct. at 1741-43, 82 USPQ2d at 1397 is instructive:
10 The flaws in the analysis of the Court of Appeals relate for the
11 most part to the court’s narrow conception of the obviousness inquiry
12 reflected in its application of the TSM test. In determining whether
13 the subject matter of a patent claim is obvious, neither the particular
14 motivation nor the avowed purpose of the patentee [here the
15 applicants] controls. What matters is the objective reach of the claim.
16 If the claim extends to what is obvious, it is invalid under § 103. . . .
17
18 The first error of the Court of Appeals in this case was to
19 foreclose this reasoning by holding that courts and patent examiners
20 should look only to the problem the patentee [here the applicants] was
21 trying to solve. . . .
22
23 The second error of the Court of Appeals lay in its assumption
24 that a person of ordinary skill attempting to solve a problem will be
25 led only to those elements of prior art designed to solve the same
26 problem. . . . Common sense teaches, however, that familiar items
27 may have obvious uses beyond their primary purposes, and in many
28 cases a person of ordinary skill will be able to fit the teachings of
29 multiple patents together like pieces of a puzzle. . . .
30
31 The same constricted analysis led the Court of Appeals to
32 conclude, in error, that a patent claim cannot be proved obvious
33 merely by showing that the combination of elements was “obvious to
34 try.” Id., at 289 (internal quotation marks omitted). When there is a
10
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