Justice Kennedy writing for a unanimous Supreme Court, directed the Federal Circuit to broaden the test of obviousness under 35 U.S.C. § 103 back to its original framework as set out in Graham v. John Deere, Co. of Kansas City, 383 U.S. 1 (1966); Hotchkiss v. Greenwood, 11 HOW. 248 (1851); and its progeny. Before the present case and after the decision of Graham, the Federal Circuit narrowed the test for obviousness while trying to bring more uniformity and consistency to the evaluation of obviousness. In particular, the Federal Circuit required a “teaching, suggestion or motivation” test (TSM test) after analyzing obviousness under the factors identified in Graham. Under the TSM test, “a patent claim is only proved obvious if ’some motivation or suggestion to combine the prior art teachings’ can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.” (emphasis added).
The Supreme Court rejected this rigid approach but not the TSM test itself. Thus the TSM test remains and can be used, as long as it is properly applied. Also, the Supreme Court reaffirmed the “functional approach” that Graham reaffirmed and that the Hotchkiss decision explained. The Supreme Court, citing from Great Atlantic and Pacific T Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152 (1950), restated that a “patent for a combination which only unites old elements with no change in their respective functions. . .obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.”
The Supreme Court identified the first error of the Federal Circuit as limiting the motivation or suggestion to solving the specific problem the patentee was trying to solve. Rather, “under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”
The second error of the Federal Cirecuit was to view the extent of the prior art too narrowly by excluding prior art directed to similar items but solving different problems. Rather, the Supreme Court noted that “common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”
The third error of the Federal Circuit was the view that patent claims cannot be proved obvious merely by showing that the combination of elements was “obvious to try.” Rather, the Supreme Court states that “when 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. If this leads to the anticipated success, it is likely the product [is] not of innovation but of ordinary skill and common sense.”
Finally, the Supreme Court said that the Federal Circuit drew the wrong conclusion by attempting to mitigate the risk of courts and patent examiners falling prey to hindsight bias. Rather, the Supreme Court said that “rigid preventive rules that deny fact finders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”
In sum, the Supreme Court brought the obviousness evaluation back to the original Graham analysis, namely, determining the scope and content of the prior art; ascertaining the differences between the prior art and the claims at issue; resolving the level of ordinary skill in the pertinent art; and determining obviousness or non-obviousness against this background. Moreover, secondary considerations should also be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. KSR International Co. v. Teleflex, Inc., et al., 550 U.S. ____ (2007).