CONTEMPORARY

NON-OBVIOUSNESS
ANALYSIS
© Dr. Vikas Bhati, RMLNLU, LKO.
Supplementing of Graham Inquiry with
TSM
◦
Test
TSM test: required to prove a claimed invention would have been obvious, one must prove that the prior
art as a whole would have suggested the invention to one skilled in the art.

◦ The TSM test basically says that a patent claim is only proved obvious if some motivation or teaching to
combine the prior art teachings can be found in the prior art, the nature of the problem or the knowledge of
PHOSITA.

◦ Added a mechanism to avoid HINDSIGHT BIAS in addition to the statutory provision.

◦ Hindsight bias: Now that what it has succeeded, it may very well seem very plain to any one that he
could have done it as well. (this is often the case with inventions of greatest merit.)

◦ However, when applied rigidly it fails to take into account ordinary artisan’s ordinary creativity. A person of
ordinary skill is also a person of ordinary creativity, not an automation. KSR CASE TO THE POINT.

◦ The matter stood till 2007.

- Teleflex sued KSR for patent infringement of its “adjustable pedal assembly with electronic throttle control”

(‘ Engelgau patent) (CLAIM 4)

- Claim 4 describes a mechanism for combining an electronic sensor with an adjustable automobile pedal so
the pedal position can be transmitted to a computer that controls the throttle in the vehicle’s engine.

- KSR is accused of infringing by adding an electronic sensor to one of KSR’s previously designed pedals. KSR
countered that claim 4 is invalid being obvious.

◦ Issue: whether the Fed. Cir. Court erred in holding that claimed invention cannot be held obvious in the
absence of some proven TSM that would have led a person of ordinary skill in the art to combine the
relevant prior art teachings in the manner claimed?
Prior Art in this case: two kinds
◦ ADJUSTABLE PEDAL ASSEMBLY

- ASANO PATENT: When pedal position is adjusted, one of the pedal’s pivot point stay fixed. Solved Constant
Ratio Problem, i. e. CRP (force required to press the pedal is same regardless of location adjustments.)

- REDDING PATENT: Sliding mechanism where both the pedal and pivot points are adjusted.

◦ ELECTRONIC PEDAL SENSORS

- ‘936 PATENT: Disclosed a pedal with an electronic sensor on the pivot point in the pedal assembly.
(preferable to detect the pedal’s position in the pedal mechanism, not in the engine.)

- SMITH PATENT: Disclosed sensors should be placed on a fixed part of the pedal assembly rather than in or
on pedal’s footpad (to prevent wire chaffing.)

- ‘068 PATENT: Modular sensors which can be attached to pedal support bracket.

- RIXON PATENT: Located the sensor in the pedal footpad, but it is known for wire chaffing.
 District Court and Court of Appeal Findings
◦ KSR countered that when the difference between the subject matter sought to be patented and prior art are such
that the subject matter as a whole would have been obvious at the time of invention was made by a phosita,
OBVIOUSNESS.

◦ DC : KSR satisfied TSM ( state of industry would inevitable lead to combination of adjustable pedals and electronic
sensors and then RIXON+SMITH)

◦ CoA: TSM test not applied strictly enough as to say that unless the prior art references addressed the precise
problem that the patentee was trying to solve, the problem would not motivate an inventor to look at these
references.

- ASANO dealt with CRP/TELEFLEX sought to provide a smaller, simpler cheaper adjustable e pedal.

- RIXON suffered from chaffing taught nothing useful

- SMITH did not relate to adjustable pedals and thus provide no motivation

- It would not have led PHOSITA to put a sensor on ASANO; it might have been obvious to try (ASANO+SENSOR) bot
it is not relevant (obvious to try has long been held not to constitute obviousness.). THUS NON-OBVIOUS.
Supreme Court: Errors of CoA
◦ REJECTED THE RIGID & NARROW CoA approach on account of following errors:

1. Should look only to the problem the patentee was trying to solve.

(question isn’t whether combination was obvious to patentee but whether it was obvious to PHOSITA/ Under
correct analysis, any need or problem known in the field can provide a reason to combine elements .)

2. Assuming that a PHOSITA attempting to solve a problem will be led only to those prior art elements
designed to solve the same problem.

(rejected ASANO but it is common sense that familiar items may have obvious uses beyond their intended
purpose and PHOSITA will be able to piece them together/ a person of ordinary skill is also a person of
ordinary creativity/ ASANO (regardless of CRP) taught an obvious example of adjustable pedal system with a
fixed pivot point and the prior art was replete with patents indicating that a fixed pivot point was an ideal
mount for a sensor/ common sense dictates that ASANO would have been disregarded it makes little sense. )

3. Patent claim can’t be proved obvious merely by showing that the combination was obvious to try.
Errors of CoA(contd..) and Finding of SC
(where there is a design need or market pressure to solve a problem and there are finite number of identified,
predictable solutions, a person of ordinary skill has good reasons to pursue them known options within their
technical grasp. If this leads to anticipated success, it is likely not innovation but of ordinary skill and common
sense.

4. Wrong conclusion from the risk of falling prey to the hindsight bias.

(rigid preventive rules that would deny factfinders recourse to common sense.)

Finding: DC was right. Little difference between teachings of ASANO + SMITH & CLAIM 4.

Consider a designer starting with ASANO, if question was where to attach the sensor? Then it would have been
obvious to attach it on a fixed pivot point. ‘936 taught sensors on pedal not in engine; SMITH taught sensor not
on footpad but support structure of pedal assembly; RIXON gave wire chaffing problem when sensor on footpad.
– THIS WOULD TAUGHT TO PUT SENSON ON A NONMOVING PART OF THE PEDAL STRUCTURE, THE MOST
OBVIOUS NONMOVING PART TO DETECT PEDAL’S POSITION IS A PIVOT POINT. Thus what follows from SMITH is
placing sensor on pivot point (offered by ASANO)

Thus obvious.
KSR Factors indicative of OBVIOUSNESS.
(not exhaustive)
◦ Combining prior art elements according to known methods to yield predictable results;

◦ Simple substitution of one known element for another to obtain predictable results;

◦ Use of known technique to improve similar devices (methods, or products) in the same way;

◦ Applying a known technique to a known device (method, or product) ready for improvement to yield
predictable results;

◦ "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable
expectation of success;

◦ Known work in one field of endeavor may prompt variations of it for use in either the same field or a
different one based on design incentives or other market forces if the variations are predictable to one of
ordinary skill in the art;

◦ Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify
the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Concluding remarks
◦ Factual inquiries under GRAHAM are still the basis for determining obviousness.

◦ TSM transformed general principles of obviousness into rigid rules that affects Graham FACTBASED inquiry.

◦ TSM test can be used as a basis for rejection, but it should not be the case that an invention is non-
obviousness simply because a rejection based on TSM cannot be made.

◦ Question you should also ask yourself, concerning this disagreement of the court as to which is worse,
erroneous grant or erroneous denial?

Thanks.