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Motivation for the Federal Circuit Test - page 33 / 35





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Thunderchopper references to render obvious that which Lee described. The examiner's conclusory statements that "the demonstration mode is just a programmable feature which can be used in many different device[s] for providing automatic introduction by adding the proper programming software" and that "another motivation would be that the automatic demonstration mode is user friendly and it functions as a tutorial" do not adequately address the issue of motivation to combine. This factual question of motivation is material to patentability, and could not be resolved on subjective belief and unknown authority. It is improper, in determining whether a person of ordinary skill would have been led to this combination of references, simply to "[use] that which the inventor taught against its teacher." Thus the Board must not only assure that the requisite findings are made, based on evidence of record, but must also explain the reasoning by which the findings are deemed to support the agency's conclusion. 73

Finally, in In re Kahn,74 the last decision considered in this history, the Federal Circuit clarifies application of the TSM test in view of the administrative process of patent evaluation within the PTO. The court clearly indicates the TSM test is fundamentally a search for a reasonable explanation, supported by facts, as to why the invention would have been obvious.

[M]ere identification in the prior art of each element is insufficient to defeat the patentability of the combined subject matter as a whole. Rather, to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the Board must articulate the basis on which it concludes that it would have been obvious to make the claimed invention. In practice, this requires that the Board "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." This entails consideration of both the "scope and content of the prior art" and "level of ordinary skill in the pertinent art" aspects of the Graham test. 75

If the PTO is unable to provide such an explanation then the PTO fails to establish a prima facie case. Claiming that it would have been obvious to combine references, but at the same time being unable to give an explanation is the prototype of hindsight reconstruction.

When the Board does not explain the motivation, or the suggestion or teaching, that would have led the skilled artisan at the time of the invention to the claimed combination as a whole, we infer that the Board used hindsight to conclude that the invention was obvious. The "motivation-suggestion-teaching" requirement protects against the entry of hindsight into the obviousness analysis, a problem which § 103 was meant to confront.


73 74 75

277 F.3d at 1342-1344. (citations omitted) 441 F.3d 977, (Fed.Cir.2006). 441 F.3d at 986. (citations omitted)


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