Determining obviousness is a complex issue. The non-obviousness statute (section 103(a) of the US Patent Act) first established a standard of obviousness as whether “a person having ordinary skill in the art” would know from the prior art that the invention was possible or desirable. Since then, other standards have become practice, such as the teaching-suggestion-motivation (TSM) test used by the Federal Circuit, which requires that for an invention to be obvious, there must be some prior evidence that reasonably suggests the combination of references that each teach a different part of the invention. If no such evidence exists, then the invention is non-obvious and patentable. However, the TSM test has been heavily criticized for allowing incremental improvements in technology or method patents to be patented as new inventions.
The KSR International and Teleflex case — a dispute between two manufacturers of gas/accelerator pedals — has turned the spotlight on the question of obviousness and the woolly way in which it seems to be determined case-by-case. It relates to whether a patent owned by Teleflex is invalid because it claims the combination of two features of the technology: a combination that is deemed to be obvious and therefore unpatentable in light of earlier patents owned by KSR. The Supreme Court, which heard oral arguments in the case on 28 November 2006, is considering whether the TSM test should exist as the sole determinant of obviousness.
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