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Motivation for the Federal Circuit Test - page 5 / 35





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porcelain; in other words, the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. 15

The court’s curious use of the term “novelty” in the passage above should be clarified. From a modern perspective, novelty denotes § 102,16 the judicial test of which is a single prior art reference containing each and every element of the claimed invention. Historically, novelty was a looser standard, blurring into the realm of “invention/obviousness.” Fortunately, the context of the discussion usually indicates whether the court is speaking of novelty as defined in the modern sense under § 102 or instead “invention/obviousness” under § 103.

“Invention” as a test proved difficult, requiring more definition to be administered consistently and practically. The court provided insight into a more definite and administrable test in Tucker v. Spalding,17 pointing to a “suggest[ion] to the mind of an ordinary skilful mechanic” as one way of identifying those creations reaching the threshold of “invention.” The Tucker court was considering an adaptation of a known device to a different context.

The court in rejecting the patent of Newton seems to have been mainly governed by the use which was claimed for it, and also that no mention is made of its adaptability as a saw. But if what it actually did, is in its nature the same as sawing, and its structure and action suggested to the mind of an ordinarily skilful mechanic this double use to which it could be adapted without material change, then such adaptation to the new use, is not a new invention, and is not patentable. 18

Though the court did not frame the issue in the way a modern court would – looking for a TSM to combine references – it is clear from the context the court was nonetheless looking for a “suggestion” in the prior art to determine the question of “invention.”

While “invention/obviousness” was viewed as one of “invention” at the time, the context clearly indicates the court could just as easily have been talking about the “obviousness” of the claimed invention instead. While the question of “invention” versus “obviousness” is not the subject of this history, it is an important component. “Obviousness” did not replace ‘invention’ as the statutory codification of “invention/obviousness” until 1952. The modern TSM test is often viewed as reaching the concept of “obviousness” not “invention.” Despite the change from “invention” to “obviousness” the earlier cases decided under the “invention” standard still provide valuable insight into the TSM test today.


52 U.S. at 265.


35 U.S.C. § 102.


80 U.S. 453 (1871).


80 U.S. at 455-456.


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