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April 30, 2007


In its landmark decision of KSR v. Teleflex, reversing the appeals court, the Supreme Court has broadened the interpretive scope of 35 U.S.C. § 103(a), the obviousness clause. Patentable subject matter is thus constricted. In the large, in light of the ruling, a known combination of elements are only patentable if their combined functionality yields the unexpected. What was once impermissible hindsight is now permissible.

A unanimous opinion delivered by Justice Kennedy -

Section 103 forbids issuance of a patent when the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

In Graham v. John Deere Co. of Kansas City, 383 U. S. 1 (1966), the Court set out a framework for applying the statutory language of §103, language itself based on the logic of the earlier decision in Hotchkiss v. Greenwood, 11 How. 248 (1851), and its progeny. See 383 U. S., at 15-17. The analysis is objective:

"Under §103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Id., at 17-18.

While the sequence of these questions might be reordered in any particular case, the factors continue to define the inquiry that controls. If a court, or patent examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under §103.

6,237,565, controlled by Teleflex (exclusive licensee), went to a car gas pedal using a combination of features, where each individual feature was known in the prior art, but never combined as claimed in '565. In summary judgment, applying the Graham factor test, '565 was found obvious by the district court, thus letting KSR off the hook for infringement; a ruling overturned by the CAFC; now with the appeals court ruling reversed; in essence, the district court got it right.

The CAFC had developed, by its own precedent, a "teaching, suggestion, or motivation" (TSM) test as a basis for determining obviousness. The TSM test was a guard against what was considered "impermissible hindsight," a pernicious problem that an invention seems obvious when viewed after the fact.

Seeking to resolve the question of obviousness with more uniformity and consistency, the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the "teaching, suggestion, or motivation" test (TSM test), under which 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. See, e.g., Al-Site Corp. v. VSI Int'l, Inc., 174 F. 3d 1308, 1323-1324 (CA Fed. 1999).

With principal reliance on the TSM test, the Court of Appeals reversed. It ruled the District Court had not been strict enough in applying the test, having failed to make "'finding[s] as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention' . . . to attach an electronic control to the support bracket of the Asano assembly." 119 Fed. Appx., at 288 (brackets in original) (quoting In re Kotzab, 217 F. 3d 1365, 1371 (CA Fed. 2000)). The Court of Appeals held that the District Court was incorrect that the nature of the problem to be solved satisfied this requirement because unless the "prior art references address[ed] the precise problem that the patentee was trying to solve," the problem would not motivate an inventor to look at those references. 119 Fed. Appx., at 288.

That it might have been obvious to try the combination... was likewise irrelevant, in the court's view, because . . "'"[o]bvious to try" has long been held not to constitute obviousness.'" Id., at 289 (quoting In re Deuel, 51 F. 3d 1552, 1559 (CA Fed. 1995)).

The Supreme Court reviews everything de novo, with no respect to lower courts. The Supreme Court does not even review lower court case law as a basis for decision, only relying upon Supreme Court precedent.

The Supreme Court swats CAFC usage of TSM as inflexible, mouthing aphorisms without any content of guidance.

We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here. To be sure, Graham recognized the need for "uniformity and definiteness." 383 U. S., at 18. Yet the principles laid down in Graham reaffirmed the "functional approach" of Hotchkiss, 11 How. 248. See 383 U. S., at 12. To this end, Graham set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive. Id., at 17.

Design patents are obvious if their combination of design elements can be found, in toto, in the prior art. This is a huge step from the CAFC approach of prior art having to have addressed the same problem to be combinable. SCOTUS sets the bar of patentability for utility patents such that an unexpected must result, or a combination is old hat. Combining "prior art elements according to their established functions" is "predictable."

Neither the enactment of §103 nor the analysis in Graham disturbed this Court's earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held 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." Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Three cases decided after Graham illustrate the application of this doctrine.

In United States v. Adams, 383 U. S. 39, 40 (1966), a companion case to Graham, the Court considered the obviousness of a "wet battery" that varied from prior designs in two ways: It contained water, rather than the acids conventionally employed in storage batteries; and its electrodes were magnesium and cuprous chloride, rather than zinc and silver chloride. The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. 383 U. S., at 50-51. It nevertheless rejected the Government's claim that Adams's battery was obvious. The Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious. Id., at 51-52. When Adams designed his battery, the prior art warned that risks were involved in using the types of electrodes he employed. The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams's design was not obvious to those skilled in the art.

In Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U. S. 57 (1969), the Court elaborated on this approach. The subject matter of the patent before the Court was a device combining two pre-existing elements: a radiant-heat burner and a paving machine. The device, the Court concluded, did not create some new synergy: The radiant-heat burner functioned just as a burner was expected to function; and the paving machine did the same. The two in combination did no more than they would in separate, sequential operation. Id., at 60-62. In those circumstances, "while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented," and the patent failed under §103. Id., at 62 (footnote omitted).

Finally, in Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court derived from the precedents the conclusion that when a patent "simply arranges old elements with each performing the same function it had been known to perform" and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282.

The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson's-Black Rock are illustrative - a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

Having a notably selective memory, here's what SCOTUS didn't quote from Great Atlantic & Pacific Tea v. Supermarket Equipment -

Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements.

The appeals court TSM test limited combining prior art references to those which went to the solving the same problem. The Supreme Court ruling trashes that concept - now, anything under the sun known to man is prior art, but the reasoning for combination should be explicit.

Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F. 3d 977, 988 (CA Fed. 2006) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness"). As our precedents make clear, however, the 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, in revisionist mode, traces the history of the TSM test to forge a hammer to gratuitously bash the appeals court, all the while claiming no inconsistency between the TSM and Graham four-factor tests. By doing so, the Court ignores more recent CAFC rulings demonstrating legally acrobatic flexibility to the precipice of caprice using TSM.

When it first established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals captured a helpful insight. See Application of Bergel, 292 F. 2d 955, 956-957 (1961). As is clear from cases such as Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.

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. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.

In the years since the Court of Customs and Patent Appeals set forth the essence of the TSM test, the Court of Appeals no doubt has applied the test in accord with these principles in many cases. There 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, as the Court of Appeals did here, it errs.

Hitting a nadir of logic, Kennedy pens a paragraph of tautology: "what is obvious is obvious."

In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.

SCOTUS now puts the scope for prior art to what is known to one of ordinary skill in the art, irrespective of the problem being solved, and not necessarily in the same technical area, but in the broader "field of endeavor."

The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve. 119 Fed. Appx., at 288. The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent's subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. 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 Court of Appeals lay in its assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. Ibid... 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... A person of ordinary skill is also a person of ordinary creativity, not an automaton.

The Supreme Court turns on its head CAFC logic with regard to "obvious to try" - now, a patentee must demonstrate that a patented combination was not obvious to try. In other words, like European patenting, declare an "inventive step".

The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was "obvious to try." Id., at 289 (internal quotation marks omitted). 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 not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.

While warning of hindsight bias, no border is drawn as to its creeping in. SCOTUS eschews rules for case-by-case determination.

The Court of Appeals, finally, drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. See Graham, 383 U. S., at 36 (warning against a "temptation to read into the prior art the teachings of the invention in issue" and instructing courts to "'guard against slipping into the use of hindsight'" (quoting Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F. 2d 406, 412 (CA6 1964))). Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.

In conclusion, the Supreme Court penned obviousness anthem, where "ordinary innovation" is not patentable -

We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts. See U. S. Const., Art. I, §8, cl. 8. These premises led to the bar on patents claiming obvious subject matter established in Hotchkiss and codified in §103. Application of the bar must not be confined within a test or formulation too constrained to serve its purpose.

In a coda, the Supreme Court boosts court power to grant summary judgment, declaring resolution of the facts to be within judicial purview. "The ultimate judgment of obviousness is a legal determination."

A separate ground the Court of Appeals gave for reversing the order for summary judgment was the existence of a dispute over an issue of material fact. We disagree with the Court of Appeals on this point as well. To the extent the court understood the Graham approach to exclude the possibility of summary judgment when an expert provides a conclusory affidavit addressing the question of obviousness, it misunderstood the role expert testimony plays in the analysis. In considering summary judgment on that question the district court can and should take into account expert testimony, which may resolve or keep open certain questions of fact. That is not the end of the issue, however. The ultimate judgment of obviousness is a legal determination. Graham, 383 U. S., at 17. Where, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.

The presumption of patent validity is stripped bare. Facing a charge of obviousness, a patentee must demonstrate that the prior art taught away, or create a combination far afield from what might be expected. In hindsight, the crowd must applaud, "damn clever idea."


In 2005, the Supreme Court thought nothing of taking away personal property, allowing local governments to abuse the right of eminent domain to condemn property and divert it to another use that might bring the city more tax revenue. With its ruling today, the Supreme Court has done the same with intellectual property.

Posted by Patent Hawk at April 30, 2007 2:16 PM | Prior Art


I'm in law school, and I just read KSR v. Teleflex for the first time in a textbook written by Loren & Miller of Lewis & Clark Law School.

The post-Depression, anti-monopoly doctrines seemed harsh, and why SCOTUS decided to swing back that direction in KSR is not clear to me. I supposed that the CAFC must have been letting way too many patent through. Setting the bar higher for 103-nonobviousness was supposedly a solution for a stiff CAFC, according to my IP-law professor. But after reading your contextualization of the TSM test application by the CAFC ("By doing so, the Court ignores more recent CAFC rulings demonstrating legally acrobatic flexibility to the precipice of caprice using TSM.") I have begun to wonder if KSR's reasoning is a pretext. Truly, what is there to prevent the "hindsight bias" except the next SCOTUS overcorrection?

Posted by: ceejay at October 6, 2010 3:02 PM


Thanks for tuning in, and your comment.

No doubt about it: Miss Hindsight put on her party dress and went to the prom on KSR's arm. Rumor and innuendo about how far she would go were rife three years ago.

Miss Hindsight certainly has been the pin-up girl at the patent office. The courts have been more tempered, but putting two and two together in hindsight is about as difficult as a criminal prosecutor getting a hungry grand jury to indict a ham sandwich.

SCOTUS popped its KSR cork as political knee-jerk: corporations were howling about lousy patents granted by slack examiners a decade earlier. Good guidance isn't exactly government's forte, and the Supreme Court is the cream of the crop.

It was entirely predictable that, post-KSR, the PTO Director, formerly a political hack, would be replaced by a corporate hack, coming from the very technology area the mule kick of KSR has been the strongest: computers. (David Kappos, from IBM)

The USPTO is at least consistent: examination on the merits remains a chimera. Only, post-KSR, the "YES" (we need the dues) stamp got replaced with "NO" can do. KSR certainly made examiner hand-waving easier.

Miss Hindsight has aged a bit, but she's still dancing.

Posted by: Patent Hawk at October 7, 2010 12:05 AM