Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (3)
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:
How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
To learn more:
The key requirements for establishing a prima facie case of obviousness are:
- Resolving the Graham factual inquiries
- Articulating a clear rationale for why the claimed invention would have been obvious
- Providing a reasoned explanation that avoids conclusory generalizations
As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.” MPEP 2143
To learn more:
MPEP 2143 – Examples Of Basic Requirements Of A Prima Facie Case Of Obviousness (3)
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:
How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
To learn more:
The key requirements for establishing a prima facie case of obviousness are:
- Resolving the Graham factual inquiries
- Articulating a clear rationale for why the claimed invention would have been obvious
- Providing a reasoned explanation that avoids conclusory generalizations
As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.” MPEP 2143
To learn more:
Patent Law (3)
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:
How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
To learn more:
The key requirements for establishing a prima facie case of obviousness are:
- Resolving the Graham factual inquiries
- Articulating a clear rationale for why the claimed invention would have been obvious
- Providing a reasoned explanation that avoids conclusory generalizations
As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.” MPEP 2143
To learn more:
Patent Procedure (3)
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:
How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
To learn more:
The key requirements for establishing a prima facie case of obviousness are:
- Resolving the Graham factual inquiries
- Articulating a clear rationale for why the claimed invention would have been obvious
- Providing a reasoned explanation that avoids conclusory generalizations
As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.” MPEP 2143
To learn more: