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Motivation for the Federal Circuit Test - page 34 / 35





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The motivation-suggestion-teaching test [] informs the Graham analysis. To reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, the Board must provide some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct. The requirement of such an explanation is consistent with governing obviousness law, and helps ensure predictable patentability determinations. 76

The facts on which the explanation may rely are found in the prior art. This does not mean there must be an explicit TSM. Instead, an implicit TSM can also satisfy the requirement so long as the explanation offered for the existence of the implicit TSM and its applicability to the situation is reasonable and satisfies the burden of proof. In addition, per Graham the level of skill in the art is another fact on which the explanation can rely.

A suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references.... The test for an implicit *988 showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art. However, rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. This requirement is as much rooted in the Administrative Procedure Act, which ensures due process and non-arbitrary decisionmaking, as it is in § 103.

In considering motivation in the obviousness analysis, the problem examined is not the specific problem solved by the invention but the general problem that confronted the inventor before the invention was made. Therefore, the "motivation- suggestion-teaching" test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims. From this it may be determined whether the overall disclosures, teachings, and suggestions of the prior art, and the level of skill in the art--i.e., the understandings and knowledge of persons having ordinary skill in the art at the time of the invention--support the legal conclusion of obviousness. 77


The TSM test is not a simple, mechanical test mandating a specific textual reference

76 77

441 F.3d at 986-987. (citations omitted) 441 F.3d at 987. (citations omitted)


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