The Courts have often engaged in discussion of the legal non-obvious inquiry, only with respect to evaluating whether it was obvious to combine certain elements and not with respect to the ultimate question of evaluating the level of advance over prior art or identifying the quantum of advance necessary to achieve non-obviousness.
In the context of combining prior art, the Court explained the need to consider market demand, design incentives, and other market forces that might lead to combinations or variations of prior art, or that a technique used with one product may be expected to be used with another. The Court also clarified that obviousness must be judged based on the claims and the prior art generally, not only on the particular solution to the particular problem that the patentee was working on. Despite the fact that these statements impart some insight relevant to measuring non-obviousness, they do not provide a reliable yardstick for the quantum of ingenuity necessary.
Despite the fact that the doctrine at issue in Supreme Court’s decision in KSR v. Teleflex [550 U.S. 398 (2007)] was based on the hindsight bias, the Court’s opinion barely even acknowledges the hindsight problem. The Federal Circuit had developed the TSM requirement to combat the hindsight bias, a fact one would be hard pressed to decipher from the KSR opinion itself.
The Supreme Court’s ruling that TSM should not be the sole basis for determining obviousness is sure laudable, however what has arisen as a problem is too wide an area to be interpreted. We have been left to interpret what common sense would be. It is again a subjective issue.
Post-KSR cases involving claims to subject matter in more “predictable” fields of endeavor have resulted in findings of obviousness with seemingly greater frequency. For example, in Leapfrog Enters. v. Fisher-Price, Inc., 485 F.3d 11 (Fed. Cir. 2007), the court affirmed the obviousness of claims directed to a toy made up of a housing, a sound production device, at least one depiction of a sequence of letters, and a reader. Finding that the application of modern electronics to an older prior art electromechanical toy would have been obvious, the court stated “accommodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices”. The court specifically cited to the common sense of those skilled in the art (as directed by KSR) in determining the claims were obvious.