However, consistent use of the TSM test would not come about until much later starting in the Court of Customs and Patent Appeals. It is fair to say increased reliance on the TSM test is largely in response to the pernicious problem of hindsight reconstruction. As patent litigation continued to evolve in the CCPA and then Federal Circuit, so did the rigor with which the TSM test was consistently applied. Applied rigorously, the TSM test proved to be a valuable tool for reaching rational, defensible obviousness determinations consistent with Graham while avoiding hindsight reconstruction.
The elegance of the TSM test can best be appreciated by tracing its development, and observing TSM’s development as the courts consistently battled with hindsight reconstruction. A discussion of the principles undergirding the TSM test will prove invaluable for framing its development. Fundamentally, the TSM test is a search for objective indicia of obviousness.8 Section 103 gives a right to a patent unless “subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.”9 This requires the court or examiner to go back in time mentally, before the invention became known, and decide if what the inventor accomplished would have been obvious given the state of the art at the time.
Of course, the court or examiner has the unfortunate benefit of knowing the invention before the obviousness analysis is carried out. With this knowledge, almost all inventions appear obvious. It becomes almost impossible to avoid reconstructing the invention by picking and choosing its different elements from the prior art. However, if the court or examiner is required to provide a plausible rationale, explaining precisely why an invention would have been obvious, and that rationale is based on objective indicia found in the prior art, then the problem of hindsight reconstruction is substantially mitigated.
The TSM test is simply this – a requirement of providing a plausible rationale that an invention would have been obvious. Of course, to be plausible, the rationale must be sufficiently precise and be based on objective evidence. This requirement is nothing new to well accepted § 103 jurisprudence. The Supreme Court identified the requirement of a plausible, reasonable obviousness determination supported by objective indicia in Graham.10 The TSM test is simply one way of expressing the Graham requirements in an effective and administrable test.
While the TSM test itself is simple, it not necessarily simple to apply. The key to a successful application of the TSM test is a proper articulation of the reason why an invention is considered obvious. The articulation must be reasonable and thorough, providing a rationale based on proper objective evidence. Finally, the rationale must meet the burden of persuasion applicable to the particular context.11 Failure to provide
8 To be distinguished from Graham’s secondary factors which are also often referred to as objective indicia of obviousness. The principle is the same though. Both search for objective evidence that support a determination of obviousness.
9 10 35 U.S.C. § 103. Emphasis added. Graham v. John Deere Co., 383 U.S. 1, 17-18, (1966)(“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.”)
11 A preponderance of the evidence during the patent examination and on appeal from an examination unfavorable to the applicant. This is to be distinguished from deference due to the determination of the