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Motivation for the Federal Circuit Test - page 8 / 35





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essence, simply a method of identifying a rationale for why a combination of known elements is or is not “obvious.”

But, the Winslow Tableau is only consistent with Graham if rigorously applied. One must place oneself at the time before the invention was known. Failure to do so is catastrophic to a legitimate analysis. The ultimate goal is to determine whether it would have been obvious to combine elements found in the prior art and create the invention. In most cases, knowledge of the invention makes the invention facially obvious, providing a blueprint for picking and choosing the elements from the prior art.

Unfortunately, long experience proves hindsight reconstruction almost inevitable with the Winslow Tableau approach, since placing oneself back in time before the invention was known is so difficult. The courts responded by refining the analysis by consistently asking for objective evidence found in the prior art and a reasonable articulation of why those elements would have been obvious at the time of the inventive process to combine. In other words, the TSM test.

Origin of the Teaching, Suggestion, or Motivation

Probably the most difficult and contentious aspect of the current TSM test is the precise origin of the teaching, suggestion, or motivation. The court provided valuable insight in Hollister v. Benedict Manufacturing,25 identifying “the suggestion of that common experience” as a valid source of the reason why “invention” would not be found.

[The invention] seems to us not to spring from that intuitive faculty of the mind put forth in the search for new results, or new methods, creating what had not before existed, or bringing to light what lay hidden from vision; but, on the other hand, to be the suggestion of that common experience, which arose spontaneously and by a necessity of human reasoning, in the minds of those who had become acquainted with the circumstances with which they had to deal. 26

The court was considering the question of “invention” and not a specific TSM to combine prior art elements. However, the reasoning in Hollister is directly relevant to the TSM test since the TSM test is simply a way of articulating the requirement of a clear reason for judging an invention as “obvious” or lacking in “invention.”

As will be seen in later decisions, the modern articulation of the concepts identified in Hollister is phrased in terms of “knowledge of one skilled in the art” and “the nature of the problem.” Of course, the other source of a TSM can be found in the prior art, in which case the prior art in some manner identifies the desirability of the particular combination of elements found in the invention. These concepts are also identified by later courts and commentators as implicit and explicit.


113 U.S. 59, (1885).


113 U.S. at 72.


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