The Federal Circuit Reviews Obviousness, and its "Flexible" Suggestion Test

DyStar v. Patrick Co. (Fed. Cir. 2006) The Federal Circuit reversed the denial of JMOL that the claims were not invalid, finding the claims invalid for obviousness.
SIGNIFICANCE: The Federal Circuit comprehensively restated the obviousness standard in advance of the Supreme Court's decision in Teleflex, Inc. v. KSR Int'l Co., supporting its "suggestion test".
QUOTE: "Obviousness is a complicated subject requiring sophisticated analysis, and no single case lays out all facets of the legal test."
BRIEF: The Federal Circuit examined the obviousness of a method whose individual steps were all known. The Federal Circuit said the isse prseented was to determine "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a). The Federal Circuit had to address two questions: (1) whether a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and (2)whether there would have been a reasonable expectation of success in doing so.
The Federal Circuit continued its analysis with the Graham factors: (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the art; and (4) any relevant secondary considerations, including commercial success, long felt but unsolved needs, and failure of others. In case where all claim limitations are found in a number of prior art references, the factfinder must determine "[w]hat the prior art teaches, whether it teaches away from the claimed invention, and whether it motivates a combination of teachings from different references". This is where the suggestion test comes in to "prevent[s] statutorily proscribed hindsight reasoning when determining the obviousness of an invention."
The Federal Circuit explained that the suggestion test is not a rigid categorical rule. The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself. The Federal Circuit said "there is no requirement that the prior art contain an express suggestion to combine known elements to achieve the claimed invention. Rather, the suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art." The evidence of a motivation to combine need not be found in the prior art references themselves, but rather may be found in "the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved." The suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense, and starts from the self-evident proposition that mankind, in particular, inventors, strive to improve that which already exists.