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Motivation for the Federal Circuit Test - page 18 / 35





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substantially alter the course of relevant caselaw. Long before the act, the CCPA was analyzing “invention/obviousness” in a manner consistent with § 103 requirements.

Indeed, this doctrinal continuity was clearly asserted in what is the second event of note during this period, the Graham decision. In the way § 103 focused the “invention” analysis, the Graham court brought clarity to § 103 analysis. One seems a natural antecedent to the other. With § 103 providing a clear restatement of the “invention” requirement, so must the court restate with equal clarity how to go about the “invention” analysis. While these two related events were major milestones, because neither changed the substance of the “invention” requirement, neither dramatically altered the course of the relevant caselaw.

The sheer number of decisions during this period makes a case-by-case analysis impractical. It is also, fortunately, unnecessary. As a whole, the relevant doctrines do not substantially change during this period. With most of the groundwork laid by the Supreme Court and D.C. Circuit, the CCPA spent most of its time applying the law but not radically changing it. As with any area of law, there are a few decisions with peculiar facts and results that stand out. However, the general trend was to largely reiterate already developed doctrine. As such, a different approach than the one used above will be taken. Instead of chronologically stepping through each case only a select few decisions of illustrating the CCPA’s approach will be analyzed in some detail.

Degree of Required Specificity

Probably the single question about the TSM test that most often arises is what degree of specificity the TSM must have to legitimize a claim the TSM indicates the invention would have been obvious given the prior art. Probably the first decision to directly address this point was In re Goepfrich. 46

Upon this point appellant contends that references cannot be properly combined unless one or more of them teaches the combination claimed, and that such teaching is not found in any of the references before us.

In support of this contention appellant quotes a paragraph from our decision in the case of In re Huntzicker, reading as follows:

We find nothing in the references to suggest that appellant's new, useful, and commercially successful device might be constructed by combining some of their elements. We are of opinion, therefore, that the appealed claims involve invention and are patentable.

In our opinion said quotation should be read in connection with the paragraph immediately preceding the quotation, reading as follows:


136 F.2d 918, (C.C.P.A.1943).


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