Appeal 2007-1555
Application 09/900,442
Court characterized the teaching, suggestion, motivation test as a “helpful insight”
but found that when it is rigidly applied, it is incompatible with the Court’s
precedents. KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396. The holding in KSR
makes clear that there is no longer, if there ever was, a rigid requirement for
finding a reason to combine teachings of the prior art.
Helpful insights, however, need not become rigid and
mandatory formulas; and when it is so applied, the TSM
test is incompatible with our precedents. The
obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of
published articles and the explicit content of issued
patents. KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396.
Rather, the application of common sense may control the reasoning to
combine prior art teachings. See id. at 1742, 82 USPQ at 1397. Thus,
common sense acquired by everyday experience would dictate that an
exterior door be sealed around its entire periphery to prevent water
damage to the interior space, and that water collecting in a threshold
tank as found in Headrick if sealed along its edges could be drained to
the outside environment using internal openings, such as disclosed by
Fehr at elements P1-P5.
CONCLUSIONS OF LAW
We conclude Appellants have not shown that the Examiner erred in rejecting
claims 1-15, 40-44, 47, and 48 under 35 U.S.C. § 103(a) as unpatentable over the
prior art.
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