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Motivation for the Federal Circuit Test - page 14 / 35





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Explicit Use of the TSM Test

During this same period, the D.C. Circuit often utilizes the TSM test as the relevant inquiry for evaluating the legitimacy of combining references in the ‘invention’ analysis. In addition, the relationship between obviousness and “invention” is further reinforced.

The references cited indicate the antiquity of the art. Numerous attempts have been made to solve the problem, but the step applicant took seems not to have suggested itself to any of them. 39


The extent to which he modified or altered existing inventions is unimportant, since he accomplished a new and beneficial result not so obvious as to suggest itself to those skilled in the art. 40

If the Corey, Piek, and Eastwood inventions taught Rowell the things embodied in the claims we are considering, why did not their inventors perceive what they had to reveal and inculcate before Rowell disclosed his conception? Why should those inventions speak to Rowell but not to those who had conceived them? Corey, Piek, and Eastwood were searching for just what Rowell found, but they derived no assistance from their previous discoveries, or at least not enough to guide them to the desired thing. Rowell solved the problem which up to his time had puzzled men skilled in the art. It would seem that his achievement must have in it the element of invention. 41

During this period no skilled mechanic succeeded in making the changes which the Examiner believes, and the Examiners in Chief think, might be necessary to produce the Wilson device. If the changes were taught by the references, is it not somewhat singular that no one had learned how to make them prior to Wilson's time? 42

The article clearly suggests the use of blast furnace gas for running gas engines and the surplus for running steam generating boilers. In other words, this article suggests everything covered by these claims except the storage receptacle. Each of the tribunals of the Patent Office reached the conclusion that, inasmuch as a storage receptacle functioning substantially as does appellant's accumulator was disclosed in the Halpin (January 30, 1894, No. 513,922) and the Kitchen (May 23, 1911, No. 992,881 and October 22, 1912, No. 1,041,810) patents, it involved no invention to include such a receptacle in carrying out the idea suggested in the 'Power' article. 43

39 40 41 42 43

Re Harbick, 39 App.D.C. 555, 558 (D.C.Cir.1913). 39 App.D.C at 564. In Re Rowell, 48 App. D.C. 238, 240 (D.C.Cir.1918). In re Wilson, 49 App. D.C. 76, (D.C.Cir.1919). In re Ruths, 53 App.D.C. 64, 64 (D.C.Cir.1923).


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