In an eagerly anticipated decision regarding the Federal Circuit's "teaching, suggestion, or motivation" (TSM) test for analyzing obviousness, the Supreme Court on Monday issued its ruling in KSR Int'l Co. v. Teleflex Inc, No. 04-1350 (April 30, 2007). In a unanimous decision, the Court reversed the Federal Circuit's determination of validity with respect to claim 4 of U.S. Patent No. 6,237,565 and found the claim to be invalid as obvious under 35 U.S.C. § 103. The Supreme Court overruled the Federal Circuit’s non-obviousness finding, noting that “[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis,” but “…when a court transforms the general principle into a rigid rule that limits the obviousness inquiry…it errs.”
After discussing three of its post-Graham decisions (United States v. Adams; Anderson's-Black Rock, Inc. v. Pavement Salvage Co.; and Sakraida v. AG Pro, Inc.), the Court reaffirmed that its precedents make clear that a proper analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." The Supreme Court found that KSR provided convincing evidence that mounting an available sensor on a fixed pivot point of the Asano pedal was a design step well within the grasp of a person of ordinary skill in the relevant art and that the benefit of doing so would be obvious. The flaws in the Federal Circuit’s analysis relate mostly to its narrow conception of the obviousness inquiry consequent in its application of the TSM test. The Federal Circuit erred in (1) holding that courts and patent examiners should look only to the problem the patentee was trying to solve, (2) assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem, (3) concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try, and (4) drawing the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias.
Upon the Supreme Court’s application of these standards, claim 4 was found to be obvious. Regardless of Asano’s primary purpose, it provided an obvious example of an adjustable pedal with a fixed pivot point, and the prior art was replete with patents indicating that such a point was an ideal mount for a sensor. The Court concluded, that "[h]elpful insights . . . need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents." The Federal Circuit considered the issue too narrowly by, in effect, asking whether a pedal designer writing on a blank slate would have chosen both Asano and a modular sensor similar to the ones used in the Chevrolet trucks and disclosed in the ‘068 patent. Ultimately, under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed.
Read a summary and view the final memo from the USPTO, outlining interim guidelines on obviousness examination in wake of KSR decision.