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Motivation for the Federal Circuit Test - page 32 / 35





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Pro– Mold's evidence of commercial success, however, created genuine issues of material fact precluding summary judgment….[discussion of the facts concerning commercial success] 71

Pro-Mold illustrates that the TSM test need not require a specific, exacting teaching as to how to create the invention in question. In Pro-Mold the TSM comes from the nature of the problem to be solved. In essence the TSM test is a search for a reasonable rationale as to why the invention would have been obvious based on objective evidence in existence at the time of the invention’s creation. Indeed, In re Lee,72 indicates no less.

As applied to the determination of patentability vel non when the issue is obviousness, "it is fundamental that rejections under 35 U.S.C. § 103 must be based on evidence comprehended by the language of that section." The essential factual evidence on the issue of obviousness is set forth in Graham v. John Deere Co., and extensive ensuing precedent. The patent examination process centers on prior art and the analysis thereof. When patentability turns on the question of obviousness, the search for and analysis of the prior art includes evidence relevant to the finding of whether there is a teaching, motivation, or suggestion to select and combine the references relied on as evidence of obviousness.

"The factual inquiry whether to combine references must be thorough and searching." It must be based on objective evidence of record. This precedent has been reinforced in myriad decisions, and cannot be dispensed with.

The need for specificity pervades this authority[.]

"[P]articular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed";

"[E]ven when the level of skill in the art is high, the Board must identify specifically the principle, known to one of ordinary skill, that suggests the claimed combination. In other words, the Board must explain the reasons one of ordinary skill in the art would have been motivated to select the references and to combine them to render the claimed invention obvious.";

[T]he examiner can satisfy the burden of showing obviousness of the combination "only by showing some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references.”

With respect to Lee's application, neither the examiner nor the Board adequately supported the selection and combination of the Nortrup and

71 72

75 F.3d at 1572-1573. (citations omitted) 277 F.3d 1338, (Fed.Cir.2002).


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