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In the recent case of KSR International Co. v. Teleflex, Inc., 550 U.S. ___ (2007), the Supreme Court unanimously held that a rigid application of the CAFC's "teaching, suggestion, or motivation" (TSM) test of obviousness is inconsistent with 35 U.S.C. § 103. Although the TSM test may be a "helpful insight" in the obviousness inquiry, the Court made clear that it is not a mandatory test of obviousness. However, while it is now clear what the test of obviousness is not, patent practitioners are left with little guidance as to what the test actually is.
Background
The claim at issue in the case covered an electronic sensor for determining the position of an adjustable gas pedal. The claim has three elements that are particularly relevant in the case: (1) an adjustable pedal, (2) a stationary support, and (3) an electronic pedal-position sensor mounted on the stationary support. Teleflex, the exclusive licensee of the patent, sued KSR for infringement; KSR asserted that the claim was invalid as obvious.
The parties did not dispute that a prior art reference taught the combination of (1) an adjustable pedal and (2) a stationary support, and that another prior art reference taught (3) an electronic sensor mounted on a stationary support (in a non-adjustable pedal). Although these elements were found in the prior art, no single reference taught their combination. Another prior art patent taught an electronic sensor mounted on a movable part of an adjustable pedal. It was well known in the art that this arrangement is undesirable because the movement of the sensor causes wires to chafe and wear out.
Supreme Court's Decision
In light of this prior art, the Supreme Court found the claim invalid as obvious. By doing so, it reversed the CAFC, which found the claim nonobvious because there was no specific teaching, suggestion, or motivation to mount an electronic sensor on a stationary support of an adjustable pedal. The Supreme Court found the claim obvious because it identified a reason to combine the references, namely the well-known problem of wire chafing when a sensor is mounted on a movable part of an adjustable pedal.
The Court also broadened the scope of prior art in which the combined references may be found. The Court said that the CAFC erred "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." Instead, the person of ordinary skill looking to solve a problem will combine relevant references, regardless of the problems those references solve.
Analysis of the Supreme Court's Decision
The decision immediately raises an important question: what is the distinction between the Supreme Court's "reason to combine" and the CAFC's "teaching, suggestion, or motivation to combine?" To the extent that the TSM test requires an explicit teaching in the prior art, it is overruled. The reason to combine may not only be explicit, but also implicit, such as a problem known in the art. For example, in a passage that may affect how patent prosecutors draft specifications in the future, the Court stated that a patent "can be proved obvious … 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." It is not relevant whether this is the problem sought to be solved by the applicant/patentee, so long as a person having ordinary skill in the art would recognize this problem and solve it using the claimed combination. Thus, it is possible that the problems known in the art, as recited in the Background of Invention, may be used as an implicit reason to combine references.
Another source of an implicit reason to combine references is the skill and "common sense" of a person of ordinary skill in the art. The Court explicitly stated that a combination that was "obvious to try" can be a reason to combine elements, at least where "there is a design need or market pressure and there are a finite number of identified, predictable solutions." Thus, if there is a known problem with a limited number of solutions that can be found without undue experimentation, any claim that covers one of the solutions is likely to be held obvious.
Conclusion
In summary, the TSM test is overruled to the extent that it requires an explicit reason to combine in the prior art. Thus, the main significance of the case is not a semantic difference between "reason" and "teaching, suggestion, or motivation," but rather that the impetus to combine can be implicit as well as explicit. Most notably, it can be found in the nature of a problem known in the art, regardless of whether that was the problem sought to be solved by the applicant/patentee. Although the case may not clarify the law of obviousness, and may in fact confuse it further, it is nonetheless required reading for patent practitioners as it is the Supreme Court's most recent pronouncement on the subject and may be a harbinger of how the Court will decide future cases.
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