The TSM Test and Non-obviousness
TSM test is the Teaching, Suggestion and Motivation test. It simply means, when analysing the obviousness of an invention while comparing it with prior art, these are the three questions that have to be asked:
- Is the prior art quoted instrumental in teaching the reader the method of producing the invention?
- Does the prior art or any of its contents suggest any method of producing the invention in question?
- Does the prior art talk about problems related to a particular technology motivating an invention in a particular manner?
It must be well understood by now that to receive a patent over an invention there has to be leap. A sufficient “leap” beyond what is already known that can be demonstrated as objectively as possible. As laid down in Hotchkiss v. Greenwood, 52 U.S. 248, 267 (1850), what is looked for is the evidence of “more ingenuity and skill… than were possessed by an ordinary mechanic acquainted with the business.”
An “ordinary mechanic” just combines or substitutes old elements. It can also represent someone just producing the next step in the evolution of an innovation, which anyone knowledgeable would “know” how to do. This is equivalent to the low objective, non-novelty, standard (A+B=C).
Courts have defined what is not patentable: inventions that do not make a sufficient leap (iterations beyond the first order), or more specifically, those inventions that are obvious. Determining obviousness by assessing a sufficient leap is subjective. To cut down on the variability of this determination, obviousness is evaluated from the perspective of a Person Having Ordinary Skill in the Art (PHOSITA).
An invention therefore is obvious, and therefore not patentable, if a PHOSITA would find that the leap was insufficient to make the invention non-obvious. Also, Winner Int’l Royalty Corp. v. Wang, considered the TSM test, saying there must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements.