In Private Practice for 25 Years


Obviousness is perhaps the most important issue of patent law.1 Patents are not to be granted or enforced if the alleged invention is obvious. The obviousness determination is central to decisions by the U.S. Patent Office on whether to grant a patent. Obviousness is an issue in most patent infringement lawsuits. So on April 30, 2007 in KSR v. Teleflex, U.S., No. 04-1350, the U.S. Supreme Court established a landmark when it overturned the implementation by the Court of Appeals for the Federal Circuit (CAFC) of its obviousness criteria. The decision is sweeping because the CAFC has almost exclusive appellate jurisdiction in patent matters.

The patent in suit (the KSR Patent) disclosed an accelerator pedal that could be moved toward or away from the driver's seat in a vehicle. Pedal pressure was sensed electronically at a non-movable pivot. Some prior patents showed repositionable pedals with non-movable pivots and some prior patents showed electronic pedal sensors at the pedal pivot, but no prior patent showed both together. So the court faced the very routine question of the propriety of combining the technology from two sources in order to declare an invention obvious.

Innovation typically involves realizing that two or more components can be combined to produce an extraordinary result. However, if a patent could be challenged by freely combining disclosures from different sources, very few patents would be valid. With the inventor's disclosure as a blueprint, a challenger can easily select the components that make up the invention from the prior art (in this case older patents).

Recognizing the unfairness of an attack guided by such hindsight, the courts have set limits. The gold standard for judging obviousness is set forth in Graham v. John Deere Co., 383 U. S. 1, and involves three steps: determining the scope and content of the prior art; ascertaining the differences between the prior art and the claims at issue; and resolving the level of ordinary skill in the pertinent art. After deciding the relevant skill level, the main difficulty is determining whether this skilled practitioner would select and combine technology from the different sources as proposed by a challenger. Applying this test can be difficult, but the courts have developed certain secondary considerations to aid in this analysis.

The CAFC has the main responsibility for overseeing the application of the obviousness criteria and has developed an extensive body of law to deal with this difficult issue. Under CAFC precedent, obviousness cannot be established by combining the teachings of the prior art without some teaching, suggestion or motivation supporting the combination (the TSM test). The teaching, suggestion, or motivation to combine may flow from the prior art itself, the knowledge of skilled technologists, or from the nature of the problem to be solved.2 The CAFC and its predecessor have been applying the TSM test for at least two decades (or in the guise of the "suggestion" test perhaps nearly seventy years).

The Supreme Court found the TSM test useful and available for future use, but found the CAFC was applying the test too rigidly. In this case, the CAFC expressed concern that patents in a proposed combination of patents addressed problems different from the problem tackled by the KSR Patent (simplifying the pedal assembly versus stabilizing the pedal feel). The U.S. Supreme Court ruled it was error to restrict the available prior art to only references concerned with the same problem addressed by the KSR Patent.

The U.S. Supreme Court also explained that an unduly restricted mode of analysis may prevent the use of common sense. Basically, no rule of law or practice should permit the grant of a patent for an obvious solution to a known problem. The court adopted instead a broader view and noted the existence of market pressures to upgrade existing pedal assemblies with electronic sensors that allow direct communications with a vehicle computer. These market pressures, not necessarily discussed in the patent or technical literature, created a strong incentive to combine the teachings of the cited prior art, notwithstanding the diverse problems being addressed.

The U.S. Supreme Court also found that the CAFC failed to properly consider the argument that a combination may be obvious if it is "obvious to try" that combination. While this has unleashed a powerful argument, hopefully it will be used cautiously, especially in the chemical arts. For example, one can easily find long lists of chemical components and say correctly that combining these different components is obvious to try, even though the possible combinations may be astronomical and the outcomes uncertain. Applications of the "obvious to try" consideration should probably be coupled with the court's teachings on predictability and finiteness, which immediately follow its comments on the "obvious to try" consideration. The court explained that "[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp." So in such a case trying these finite predictable solutions may be obvious and may then lead to a conclusion that the alleged invention is obvious.

This case significantly changes the analysis of obviousness. While the TSM test is still valid and useful, the courts and the U.S. Patent Office would appear to have much greater flexibility in applying (and perhaps declining to apply) the TSM test, as well as more freedom to exercise common sense.


1.  Obviousness arises under 35 U.S.C. 103.

2.  See Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996); and Para-Ordinance Mfg. v. SGS Imports Intern., Inc., 73 F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995).

Copyright Thomas L. Adams 2007