How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
The ‘teaching, suggestion, or motivation’ (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:
“The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'”
The TSM test applies in obviousness determinations as follows:
- Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
- This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
- The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
- While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.
Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.
To learn more: