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Motivation for the Federal Circuit Test - page 30 / 35





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It is clear from this decision that the TSM test is simply the name given to a broad methodology of analyzing obviousness in a manner consistent with the requirements of § 103 and the Graham framework. The decision illustrates that application of the TSM test requires a thorough probing of the invention in question, identifying the relationships among the elements giving the invention its claimed importance, and seeing of those relationships would have been obvious at the time of the invention’s creation; all the while, diligently avoiding hindsight reconstruction. In the decision above this nuanced and expansive analysis is phrased in terms of a failure to identify a “suggestion” in the prior art making the salient relationships obvious to one skilled in the art. While the TSM test is phrased as three narrow words, it is clear the test itself is far more than those words alone imply.

A second example of the Federal Court’s application of the TSM test is found in Pro– Mold & Tool Co. v. Great Lakes Plastic, Inc..70 While Interconnect focused on hindsight reconstruction, Pro-Mold focuses on the TSM test applied to a situation in which the TSM comes from the nature of the problem. It should be noted that, as with Interconnect, the Pro-Mold court carefully adheres to § 103 and Graham in the process of applying the TSM test.

A determination of obviousness under 35 U.S.C. § 103 is a legal conclusion involving factual inquiries. Among these factual inquiries are secondary considerations, which include evidence of factors tending to show nonobviousness, such as commercial success of the invention, satisfying a long-felt need, failure of others to find a solution to the problem at hand, and copying of the invention by others.

The district court held that there were no genuine issues of material fact pertaining to the obviousness of the invention. The district court determined that the content of the prior art included the Squeeze Tite card holder and Classic Line Thick and Thin card holders. The Squeeze Tite card holder is a two– piece card holder with a friction fit cover. It is larger than the card and thus provides a "frame" around a stored card. The Classic Line card holders are only slightly larger than the stored card and consist of a base and slide cover. The cover fits into the base by sliding into grooves in the "long" sides of the base. The Classic Line Thick card holder was designed to hold several cards, while the Classic Line thin card holder was designed to hold one card. The district court combined the size of the Classic Line Thin card holder with the friction fit cover of the Squeeze Tite card holder, and held this combination of features to have been obvious to a person of ordinary skill in the art of the design and manufacture of card holders. The district court, however, did not provide a basis for its discounting of Pro– Mold's evidence of secondary considerations.

We agree with the district court that the Classic Line Thin and Squeeze Tite card holders together contain all the elements of the invention defined in independent claim 1 of the patent. The Squeeze Tite card holder contains all


75 F.3d 1568, (Fed. Cir.1996).


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