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Motivation for the Federal Circuit Test - page 27 / 35





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court or examiner will then identify salient differences between the prior art and the invention in question. Finally, the obviousness analysis is carried out using this prior art, focusing on the salient differences, from the perspective of one ordinarily skilled in the art.

A closer examination of the TSM test reaches the same conclusion. As the decisions cited in this history show, the TSM test is fundamentally a search for a reasonable rationale as to why an invention is obvious, based on the appropriate prior art. The courts steadfastly adhere to Graham by considering the invention and prior art as a whole, while at the same time guarding against the insidious problem of hindsight reconstruction by seeking out objective indicia in the prior art as a basis of the rationale. While the decisions are numerous, and a wide variety of language is used in the TSM analysis, the underlying theme is always the same; simply a search for a reasonable rationale consistent with Graham.

The Federal Circuit – 1982 to 2006

The TSM Test Applied with Greater Rigor

The fundamental doctrines and their application do not change much in the Federal Circuit era. What does change however is the rigor with which these doctrines are applied. Upon its creation, the court rapidly develops a strong tradition of clearly stating all applicable legal principles buttressed by citation to previous decisions. Once stated, the court then methodically applies the facts of the case to those legal principles. This differs from the CCPA in that the CCPA often operated under the assumption that it was unnecessary to state and discuss principles commonly known to the patent bar. Instead it was most important to focus on a discussion of only those facts absolutely essential to resolve the precise question.

Since the TSM test was well developed at the time of the Federal Circuit’s creation, only a few cases which illustrate their approach consistent with the CCPA will be discussed. An early decision is Interconnect Planning Corp. v. Feil considering the obviousness of a telephone system.66 The court begins by emphasizing the need to guard against the ever present problem of hindsight reconstruction.

Those charged with determining compliance with 35 U.S.C. § 103 are required to place themselves in the minds of those of ordinary skill in the relevant art at the time the invention was made, to determine whether that which is now plainly at hand would have been obvious at such earlier time.

The invention must be viewed not with the blueprint drawn by the inventor, but in the state of the art that existed at the time.

The invention must be evaluated not through the eyes of the inventor, who may have been of exceptional skill, but as by one of "ordinary skill.” This is not a facile statutory interpretation. The quality of non– obviousness is not


774 F.2d 1132, (Fed.Cir.1985).


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