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  • Supreme Court Hears Patent Case Involving Test for ‘Obviousness’

Photonics Spectra
Jan 2007
Joseph E. Gortych

On Nov. 28, 2006, the US Supreme Court heard oral arguments in the KSR International Co. v. Teleflex Inc. et al case (No. 04-1350). At issue is whether to change the test used by the US Patent and Trademark Office and the federal courts to determine whether an invention is “obvious” and thus unpatentable under 35 USC §103(a) of the patent laws. Though the patent at issue involves an accelerator pedal for automobiles, the Supreme Court’s decision will have a broad impact on all inventions, including those in optics and photonics technologies.


When all the elements that make up an invention are found in a single prior art reference (say, a previously issued patent or a journal article), the invention is said to be “anticipated” and therefore unpatentable for lack of novelty. However, when two or more prior art references are needed to piece together the invention, the invention is considered novel but may nevertheless be unpatentable because of its “obviousness.”

To establish what makes an invention obvious or nonobvious under 35 USC §103(a) in view of what is known (the prior art), the US Court of Appeals for the Federal Circuit (the highest patent court below the Supreme Court) developed and has used for some 20 years the “TSM” test: teaching, suggestion or motivation.

Because all inventions are based on previously known elements, one can, in principle, always piece together elements from various prior art references to reconstruct an invention. Thomas Edison’s light bulb, for example, ultimately was a combination of known elements — electricity, a carbon filament and an oxygen-free glass bulb.

The spirit of the TSM test is to provide a nexus among such elements in the way of a teaching, suggestion or motivation element that would lead a person skilled in the art of the invention to actually combine them to arrive at the invention, thereby making the invention “obvious.” In the case of the light bulb, there was plenty of light-bulb prior art. However, one could say that, under the TSM test, none provided a teaching, suggestion or motivation for Edison to use his particular combination of elements to arrive at a practical, long-lasting bulb.

At oral argument, KSR stated that the TSM test is inconsistent with Supreme Court precedent, is too narrow and makes obviousness almost impossible to prove. Teleflex argued that the test, when properly applied, is relatively broad and important for avoiding hindsight, and that changing 20 years of precedence would cause “dramatic instability” in the patent system.

Those readers confused by TSM are in good company. Justice Antonin Scalia called the test “gobbledygook,” and Chief Justice John G. Roberts Jr. referred to it as “worse than meaningless.” A decision in the case is due this spring.

A transcript of the arguments is available at

Meet the author: Joseph E. Gortych is president of Opticus IP Law PLLC in Sarasota, Fla.; e-mail:

The technology of generating and harnessing light and other forms of radiant energy whose quantum unit is the photon. The science includes light emission, transmission, deflection, amplification and detection by optical components and instruments, lasers and other light sources, fiber optics, electro-optical instrumentation, related hardware and electronics, and sophisticated systems. The range of applications of photonics extends from energy generation to detection to communications and...
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