that its use in a prior art composition would be prima facie obvious from the purpose disclosed in the references.
Differences between a patent applicant's and the prior art's motivation for adding an element to a composition may be reflected in the composition ultimately produced. A claimed composition may possess unexpectedly superior properties or advantages as compared to prior art compositions. In this way, the conclusion of prima facie obviousness may be rebutted and the claimed subject matter ultimately held to be legally nonobvious. However, in the present case we find no basis for disturbing the conclusion of obviousness. The result urged by appellant is the combination of a detergent, detergent builders and a cationic softener in a functional laundry composition thereby overcoming the various problems which arise when these several ingredients are used separately in different cycles of the laundering process. This is the very result achieved by Germann without the sugar. Accordingly, there is no departure from the prior art in terms of the result achieved by the addition of sugar, and the prima facie case of obviousness has not been overcome. 63
Graham and the TSM Test
The final decision for consideration in this era is Graham v. John Deere Co. of Kansas City.64 Graham identified and clarified the essential framework for analyzing obviousness.
Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. 65
The necessary relationship of the Graham requirements and the TSM test is hopefully obvious. The Graham framework identifies the full range of obviousness under § 103, and the TSM test is the methodology used to carry out the Graham analysis. Validity of using the TSM test methodology hinges on consistency with Graham. The TSM test must neither be over or under inclusive in its results.
As the history illustrates, courts consistently apply the TSM test in such a way that consistency with Graham is achieved. The content on which the TSM test is predicated is the prior art determined by an evaluation of the scope of the subject matter area. The
458 F.2d at 1016.
383 U.S. 1, (1966).
383 U.S. at 17-18.