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Motivation for the Federal Circuit Test - page 24 / 35





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A final example from the CCPA era of the court performing the TSM test In re Imperato,58 is offered which, like Adams and Wesslau, illustrates these points.

With regard to the principal rejection, we agree that combining the teaching of Schaefer with that of Johnson or Amberg would give the beneficial result observed by appellant. However, the mere fact that those disclosures can be combined does not make the combination obvious unless the art also contains something to suggest the desirability of the combination. We find no such suggestion in these references.

Contrast this teaching to what appellant has done. He combines two processes known to result in lump ore having high strength at low temperatures but not at high temperatures, yet obtains a lump ore having improved strength in both situations. We consider this to be unexpected and unobvious in view of the art despite the board's contention to the contrary. In fact, we think that the art suggests that no desirable effect would result from the combination as Schaefer teaches that the sulfur will be burned away as the temperature is raised and, therefore, would contribute nothing to the combination.

We do not think that one skilled in the art would be led by the teachings of Russo to employ sulfur in the carbonate bond process. In the first place, Russo uses sulfur in a high temperature molding process employed to make finished articles of high strength from iron powder. The reference does not suggest that this strength is improved at high temperatures such as are encountered in the metallurgical processes for which lump ore is useful.

Secondly, there is nothing in the record to suggest that the problems of powder metallurgy in any way resemble those of lump ore preparation. Therefore, if Russo would suggest that sulfur improves the strength at high temperatures of articles molded from iron powder, we think one skilled in the art would not view this to be significant in view of the contrary suggestion in Schaefer, a more pertinent reference, concerning the effect of adding sulfur to a metal ore. 59

Importance of Context for Understanding Proper Application of the TSM Test

The three decisions discussed immediately above illustrate in some detail how the TSM test was conceptualized and applied during the CCPA era. It should not be forgotten that the TSM test operates as a component of a larger context ultimately governed by § 103 requirements. A broad but succinct summation of how the CCPA viewed this context is found in In re Sponnoble. 60

It should not be necessary for this court to point out that a patentable invention may lie in the discovery of the source of a problem even though the remedy

58 59 60

486 F.2d 585, (C.C.P.A.1973). 486 F.2d at 587-588. (citation omitted) 405 F.2d 578, (C.C.P.A.1969).


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