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Motivation for the Federal Circuit Test - page 20 / 35





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…The obvious problem was simply the failure of tires on airplanes landing at high speeds with heavy loads. Much of what we have quoted above is, in fact, appellant's own analysis of the causes of the failure which led him to the means for its solution. In cases of this kind it must not be lost sight of, as pointed out by the Supreme Court, that the inventive act which entitles an applicant to a patent resides as well in the discovery of the source of trouble as in the application of the remedy. 51


What seems to be the closest reference in point of disclosure of tread reinforcement, the 1911 Liais French patent, is so lacking in disclosure as to teach nothing to anyone who did not already full understand the significance of two broken lines described as "les toiles dites 'de croissant'." We do not understand it, appellant claims not to and the Patent Office has shed no further light on the subject. We feel that what light there is glows so dimly as to be totally ineffective as a suggestion which would make appellant's claimed invention obvious to anyone and certainly not to one of ordinary skill in the tire making art faced with the practical problem of preventing the destruction of airplane tires, inflated to over 200 pounds, by landings at over 200 miles per hour. 52

Not only must there be an articulated reason, that reason must be persuasive enough to meet the burden of persuasion demanded by the procedural posture of the case. In finding the reasoning behind the TSM offered by the PTO unpersuasive, the court in Application of Wesslau,53 illustrates the form of analysis required under the TSM test. The patent at issue involves the production of polyethelene.

The sole issue in this case is obviousness under 35 U.S.C. § 103. Appellant's principal contention is that:

  • since none of the reference(s) either singly or in combination

teach a control of the molecular weight distribution range by specific selection of catalyst components, or even that the nature or composition of the catalyst could have an effect on this molecular weight distribution range, the subject matter of the invention as a whole could not possibly be obvious from the references….

We agree.54 ***

We believe this to be a convincing demonstration that the alkoxide or aroxide moiety, when present in the catalyst systems of the appealed claims, possesses the property of conferring a significant degree of control over the


272 F.2d at 949.


272 F.2d at 953.


353 F.2d 238, (C.C.P.A.1965).


353 F.2d at 240.


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