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Motivation for the Federal Circuit Test - page 28 / 35





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easy to measure, particularly when challenged years after the invention was made. That which may be made clear and thus "obvious" to a court, with the invention fully diagrammed and aided, in this case, by a hostile inventor seeking to eliminate his own invention, may have been a breakthrough of substantial dimension when first unveiled.

The judicial application of uniform standards for determining compliance with 35 U.S.C. § 103 is essential, because the technological incentives fostered by the patent system depend on consistent interpretation of the law. To this end, faithful adherence to the patent statute and guiding precedent fosters uniformity in result….

From its discussion of the prior art it appears to us that the court, guided by the defendants, treated each reference as teaching one or more of the specific components for use in the Feil system, although the Feil system did not then exist. Thus the court reconstructed the Feil system, using the blueprint of the Feil claims. As is well established, this is legal error. 67

After a detailed discussion of the elements of the invention and identification of the salient relationships between those elements, the court demonstrates how the prior art fails to make those relationships “obvious.” The conclusion of this part of the decision sums up nicely how hindsight reconstruction is often done.

It is impermissible to first ascertain factually what appellants did and then view the prior art in such a manner as to select from the random facts of that art only those which may be modified and then utilized to reconstruct appellants' invention from such prior art. 68

With the problem of hindsight reconstruction and the failure of the district court to avoid it well established, the court goes on to perform the TSM test. It is important to note that in applying the TSM test, the court is very careful to adhere to the requirements of § 103 and operate within the Graham framework.

35 U.S.C. § 103 requires that obviousness be determined with respect to the invention as a whole. This is essential for combination inventions, for generally all combinations are of known elements.

When prior art references require selective combination by the court to render obvious a subsequent invention, there must be some reason for the combination other than the hindsight gleaned from the invention itself. There must be "something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination.”

Critical to the analysis is an understanding of the particular results achieved by the new combination. The claims here at issue are directed to a combination


774 F.2d at 1138-1139. (citations omitted)


774 F.2d at 1141.


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