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Motivation for the Federal Circuit Test - page 19 / 35

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Considering the appealed claims in the light of the facts of record, we are constrained to hold that appellants combination, although defined broadly in the appealed claims, was not obvious to one skilled in the art.

Reading the two paragraphs together they do not sustain appellant's contention. It is obvious the paragraph relied upon by appellant should be construed as reading "We find nothing in the references to suggest to one skilled in the art * * *." 47

The court clarified the TSM test by making it clear absolute specificity of the TSM to the point of providing an unequivocal roadmap for the creation of the device was not the nature of the test. Indeed, as the court subsequently pointed out in In Re Milne,48 to construe the TSM test in such a way would lead to an absurd result.

Appellant contends that references may not properly be combined unless the cited art teaches how to combine the cited structures…. If appellant's contention should be sustained, then it would never be necessary to combine references to negative patentability, for if one of the references must teach the combination claimed that reference would be a complete anticipation of the invention and there would be no occasion to combine references. 49

As the quoted passage illustrates, the clarification that a teaching in the form of literally containing each and every element is not a requirement is critical in order for the TSM test to function correctly. The TSM test was, from its very inception, never meant to require specificity in this form. Novelty, measured by single prior art references containing each element of the claimed invention, had been an accepted requirement for patentability before the third requirement was even created. Given the existence of the novelty requirement viewed in this way, it is simply a non sequitor to then also claim that the TSM test used in the “invention” analysis must operate through a finding of a literal and precise teaching. The court will be forced on a regular basis to reiterate this point, despite it being obvious.

Underlying Search for a Cogent and Persuasive Rationale

While a literal and complete explanation of how to combine elements is not what the TSM test requires, a cognizable reason supported by the prior art is required. Failure to articulate the reason why it would be obvious to combine the elements found in the prior art will prove fatal to a claim of obviousness. Judge Giles Rich writing for the court in In Re Antonson,50 provides a valuable, if extreme, example.

47

136 F.2d at 920. (citations omitted)

48

140 F.2d 1003, (C.C.P.A.1944).

49

140 F.2d at 1005.

50

272 F.2d 948, (C.C.P.A.1959).

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