Editor’s Note: Neil W. Morrison is a member of the Litigation Section and Intellectual Property Practice Group of Ward and Smith, P.A.

After years of toil and countless hours of work, your bright idea finally becomes reality: the ‘spork’ (an ingenious combination of the spoon and fork). You want to patent your device. You know there are requirements that must be met to have a patentable invention, one of which is that it cannot be "obvious." But what does it mean to be "obvious"? What are the benchmarks in an obvious inquiry? Recently, in KSR Intl’ Co. v. Teleflex Inc., the United States Supreme Court altered the way in which patent claims are to be analyzed by courts and patent examiners, creating a new multi factor approach to reach the ultimate determination as to whether an invention is non obvious and, therefore, capable of being patented.

A Short History of the Obvious Inquiry

In simple terms, in order for an invention to be patentable under United States patent law, the difference between a new invention and prior inventions in the same area cannot be obvious to a person of ordinary skill in that area or field as of the time the new invention is created. Initially, federal courts streamlined the determination of obviousness into a three pronged objective analysis: (1) determine the scope and content of previously developed technology in the same or a related area (called "prior art"); (2) ascertain the difference between the prior art and the new invention; and, (3) resolve the level of ordinary skill in the pertinent art. Courts and patent examiners originally employed this three-step process and looked to considerations such as commercial success and unsolved needs of the marketplace to determine whether the new invention was obvious and, consequently, non-patentable.

Seeking more uniformity and consistency, the federal courts devised and used the teaching, suggestion, and motivation ("TSM") test to analyze questions of obviousness. Under TSM, a new invention was obvious only if the prior art, the nature of the problem being resolved, or the knowledge of the person of ordinary skill in the prior art revealed some level of motivation or suggestion to combine the teachings of the prior art to create the new invention. In other words, if some motivation or suggestion existed to combine the prior art spoon with the prior art fork, then your new invention, the ‘spork,’ is obvious and cannot be patented.

Changes as a Result of the KSR Decision

After KSR, TSM is viewed only as a "helpful insight" into the ultimate determination of whether your new invention is obvious. Though KSR does not provide a bright line rule for determining obviousness, it sets forth certain factors as a guide. It is through these factors, including predictability, common sense, and hindsight, that a new invention and patent claim now will be viewed.

Is Your New Invention Predictable?

An initial question to ask is whether your new invention is merely a predictable variation of known elements or techniques in prior arts or fields of endeavor. For example, does your new invention substitute one known element for another known element with the resulting combination functioning as expected? Or, conversely, does the combination yield an unexpected and beneficial result? These inquiries arise, not in a vacuum, but amid the backdrop and interaction of market forces, demands, and incentives of the design community, and the knowledge of a person of ordinary skill in the art. Admittedly, this is not a quick and simple inquiry. Nevertheless, the question must be asked as to whether there was a reason apparent to a person of ordinary skill in the art to combine the known elements or techniques in the fashion you claim. If the answer is yes, it is likely under KSR that your new invention will be deemed obvious.

The Role of Common Sense.

In KSR, the Supreme Court recited the importance of common sense no less than five times. Obviously (no pun intended), and moreover, practically speaking, the common sense of a person of ordinary skill in the chosen art cannot be undervalued. Already patented devices and designs have obvious uses beyond their primary purpose. A person of ordinary skill and common sense recognizes this potential and puts the skill and common sense to use, combining designs and their secondary purposes to guide the manufacturing and design of a new product. Under TSM, the primary purposes were evaluated to determine whether to grant a patent. Now, secondary purposes are part of the analytical mix, consequently increasing the likelihood your new invention will be deemed obvious.

Was it Obvious to Try Your Invention?

Whether it was obvious to try your invention is likely an offshoot of the common sense inquiry. Importantly, the common sense inquiry was, until the ruling in KSR, consistently rejected by federal courts. After KSR, it must be taken into account. Now, the focus turns on the swirl of market forces and design needs driving the want to solve a problem with limited, identifiable solutions. A person of ordinary skill motivated by these same forces, but necessarily limited by the finite number of known solutions, should be encouraged to pursue these limited options even though the result likely will be anticipated and predictable. Such anticipated and predictable results satisfy market need, but are the product of ordinary skill and common sense and, therefore, are not likely to be patentable.

The Role of Hindsight

In a fashion similar to its use of "obvious to try," the Supreme Court resurrected the use of hindsight as an aid in determining whether a new invention is obvious. Hindsight, like obviousness to try, consistently was rejected by federal courts applying the TSM test prior to KSR. The Supreme Court acknowledged the chief concern associated with hindsight bias – the danger of using what is widely known today to read into and analyze decisions made years ago. Nevertheless, the Supreme Court elevated hindsight to the same importance as common sense, believing it to be an available and useful tool in determining whether a new invention is obvious.


The Supreme Court has lessened the impact and reach of the TSM test in the determination of whether your new invention and patent claim are obvious. No longer will patent claims and the obviousness inquiry be viewed solely through the somewhat rigid lens of teaching, suggestion, and motivation. A confluence of other factors, including predictability, common sense, and even hindsight will contribute to the determination of whether or not your new invention and patent claim are considered obvious. KSR and its progeny must be watched closely, but this new approach appears to indicate that the Supreme Court expects more of a willingness to find obviousness on the part of the patent office and the courts.

© 2008, Ward and Smith, P.A.

Ward and Smith, P.A. provides a multi-specialty approach to the representation of technology companies and their officers, directors, employees, and investors. Neil W. Morrison practices in the Litigation Section and the Intellectual Property Practice Group, where he concentrates his practice on litigation related to trade secrets, patents, and copyrights. Comments or questions may be sent to nwm@wardandsmith.com

This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or fact situation. No action should be taken in reliance upon the information contained in this article without obtaining the advice of an attorney.