From our review of the statutory language of §103 as well as the application of that statute as spelled out in Graham v. John Deere, we have seen that obviousness is determined by an inquiry that initially takes into account the scope and content of the prior art, the differences between the claimed invention and the prior art,the level of skill of one of ordinary skill in the art, and any secondary evidence of non obviousness. In a patent application examination at the USPTO, in order for an examiner to make an obviousness rejection of the invention, the examiner must present a prima facie case of obviousness. Prima facie is Latin for “on the face of it,” and it means that the patent examiner must put forth sufficient written argument or evidence in view of the appropriate legal precedence such that the claimed invention, as described in the specification and in view of the prior art,is legally non patentable for obviousness.22 This does not mean that the invention will ultimately be determined to be non patentable for obviousness, but rather that the examiner has established sufficient arguments to place the burden of rebuttal onto the applicant. The rebuttal itself may take the form of legal arguments by the applicant, evidence of secondary considerations, or a combination of arguments and evidence. Since secondary evidence of non obviousness is often not evident from the patent application itself, the examiner’s prima facie case will typically focus on the apparent features of the claimed invention in view of the prior art; this is essentially the first three steps of the Graham inquiry. It is very often in the rebuttal to the examiner’s assertion that the patent applicant will assert secondary evidence of non obviousness (the fourth step of the Graham inquiry). Although the obviousness inquiry is ultimately a single determination, collectively taking into account the primary arguments and secondary evidence, it is most helpful to break the two types of analyses up into separate parts.

As was directly stated earlier, the obviousness inquiry cannot avoid a great element of subjectivity. However, this is not to say that the subjectivity is desired, it is not.Inventors need to know with the maximal amount of certainty, in advance, whether what they perceive to be an invention is worthy of a strong and enforceable patent.Something so valuable (and costly) as an enforceable patent right should not be subject to the luck of the draw regarding which examiner, jury or judge is assigned to evaluate whether the claimed subject matter is worth a patent or not. Perhaps just as important, those who would declare an invention obvious in view of the priorart have the advantage of hindsight gleaned from the patent application itself. Just as the answer to a brain teaser or riddle can seems so obvious once we have been given the answer, so too can an inventive solution seem obvious once we’ve seen the disclosure of the inventor’s patent application. However, unlike the person looking at the patent application who slaps herself on the forehead and says “Of course, now
I see—he just combined A with B and sprinkled in a little C—how obvious,” the patent applicant does not have his own solution in front of him at the time of the invention. That is the thing he needed to figure out. In recognition of at least these two difficulties (hindsight bias, objectivity), the federal courts have established and refined a useful analytical framework for assisting those conducting the obviousness inquiry. This analytical framework provides that in order for a claimed invention to be obvious, the examiner or judge(s) should be able to point specifically to some teaching, suggestion, or motivation (TSM test)—either in the references cited or in the knowledge generally available to one of ordinary skill in the art—or to the nature of the problem itself, or to combine references or modify the references in such away as to arrive at applicant’s claimed invention. Furthermore, the modification or combination of prior art references must represent a reasonable chance of success,and of course, the prior art references must teach, suggest, or motivate one to arrive at all of the claim elements or limitations; the claim as a whole must be obvious.
However, as a very recent Supreme Court opinion on the subject made clear, the TSM test should not be rigidly applied but is rather one useful inquiry among many that can be used to evaluate whether an invention is obvious.The TSM test is a very useful construct because it asks that the examiner provide objective evidence to support his rejection. This requirement is especially important in many chemical cases where the obviousness of a chemical structure is being asserted. In order for a claim to a chemical structure or composition to be obvious,the examiner must be able to allege not only structural similarity of the chemical structure or composition but also where the prior art provides the teaching, suggestion,or motivation to make the suggested change or combination or, if not in the prior art,why one of ordinary skill would have been motivated to combine or modify the priorart in the absence of a specific teaching in the prior art itself.

As we will see in many of the case discussions to follow, the TSM test can be quite useful but that motivation as a legal term of art is still a tricky one. Its strictures sometimes appear elastic, stretching in such ways that previous forms cannot always be recognized. To appreciate how federal courts have applied the test to specific chemical cases, we’ll first stipulate to the characterization that the motivation requirement is a patentee-friendly policy. It puts the burden on the party alleging obviousness to not only describe the features that make the prior art disclosure(s)similar to applicant’s claimed invention but also asks him to explain why somebody of ordinary skill in the art would have wanted to make the change. The difficulty of this task to a large part rests on how broadly the courts want to define motivation.
Defined most broadly, one might readily find motivation everywhere, by simply saying something to the effect: “One of ordinary skill in the art would be motivated to modify the prior art references to arrive at applicant’s claimed invention because it is‘obvious to try’ variations and combinations of things that are already known.” On the narrow end of the spectrum, one might hear: “Show me where the prior art motivates one to make this specific modification or this specific combination—‘obvious to try’cannot be the standard.” The actual position taken by any federal court or patent examiner is going to be a reflection of the specific facts before her as well as, to some extent, her own reference point. To better appreciate how this very important test is applied, several examples from federal court opinions on the subject will be presented. Even when not discussed specifically, aspects of the TSM test will still be evident in many of the cases that have been highlighted for other purposes.

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