(Fed. Cir.; October 3, 2006), Chief Judge Michel addressed crticisms of his court's standard for the motivation to combine teachings from multiple references in order to invalidate a patent claim:
Following the 1952 enactment of § 103, the Supreme Court explained that obviousness depends on (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. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
This court has articulated a subsidiary requirement for the first Graham
factor, the scope and content of the prior art. SIBIA Neurosciences, Inc. v.
Cadus Pharma. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). Where, as here, 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". In re Fulton, 391 F.3d 1195, 1199-1200 (Fed. Cir. 2004).
It is important in this inquiry to distinguish between the references sought to
be combined and "the prior art", as the latter category is much broader. For
example, textbooks or treatises may include basic principles unlikely to be
restated in cited references.
. . . In contrast to the characterization of some commentators, 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. In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999). As we explained in Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997), "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."
. . . DyStar argues that this court's "suggestion test" for obviousness requires the cited references themselves to contain a suggestion, teaching, or motivation to combine them, and that it must be explicitly stated. DyStar then points out, correctly, that Brochet does not suggest combining his invention with those of Chaumat or Wimmer to stabilize his leuco indigo solution in oxygen-excluding containers until either using it directly in the dyebath or placing it on the market for sale, respectively. Absent such a teaching, urges DyStar, the invention of claim 1 of the '992 patent cannot be obvious.
DyStar's argument misreads this court's cases and misdescribes our suggestion test, echoing notions put forth recently by various commentators and accepted in major reports. A 2003 report by the Federal Trade Commission, for example, quoted testimony of certain witnesses that this court requires "specific and definitive [prior] art references with clear motivation of how to combine those references" and requires the PTO to find "the glue expressly leading you all the way [to obviousness]" and "connect the dots . . . very, very clearly." Fed. Trade Comm'n, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy ch. 4, at 11 (2003). Similarly, a 2004 report by the National Academy of Sciences summarized views of a few commentators that "standards of patentability—especially the non-obviousness standard—have become too lax as a result of court decisions" by the Federal Circuit, leading to the deterioration of patent quality. Nat'l Research Council, A Patent System for the 21st Century 3 (Stephen A. Merrill et al. eds., 2004). But see Am. Intellectual Prop. Law Ass'n, AIPLA Response to the National
Academies Report entitled "A Patent System for the 21st Century" 10 (2004)
("AIPLA believes that the courts, including the Federal Circuit, have applied
the standard of non-obviousness with both the needed rigor and the appropriate
vigor, and they have done so with a commendable consistency over the past two
decades. If a difficulty exists with application of the non-obviousness standard
today, it does not lie in the patent statute or in substantive law of
non-obviousness as applied in the courts.")
Seeking to support their assertions about Federal Circuit caselaw, these few commentators have quoted isolated statements from three of our precedents in particular, including Dembiczak, 175 F.3d at 1000, wherein we stated that the analysis by the Board of Patent Appeals and Interferences ("Board") "fails to demonstrate how the [two cited] references teach or suggest their combination" (emphasis added), and In re Lee, 277 F.3d 1338, 1341, 1344 (Fed. Cir. 2002), where we characterized the Board's statement that "[t]he conclusion of obviousness may be made from common knowledge and common sense of a person of ordinary skill in the art without any specific hint or suggestion in a particular reference" as "[o]mission of a relevant factor required by precedent". They have also cited our repeated use of the word "references" in the following list from Ruiz v. A.B. Chance Co., 234 F.3d 654 (Fed. Cir. 2000), where we suggested a motivation to combine may be found:
- in the prior art references themselves;
- in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or
- from the nature of the problem to be solved, leading inventors to look to references relating to possible solutions to that problem.
Id. at 665(emphasis added) (internal quotation marks omitted). Despite containing arguably imprecise language in these statements, quoted out of context, each of the above-cited cases correctly applies the suggestion test and by no means requires an explicit teaching to combine to be found in a particular prior art reference. Dembiczak involved the combination of a reference in the plastic
trash bag art with children's arts and crafts books that included, among
innumerable fanciful drawings, jack-o-lanterns. Contrary to some interpretations, we stated explicitly that 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." 175 F.3d at 999 (citation omitted). When not from the prior art references, the "evidence" of motive will likely consist of an explanation of the well-known principle or problem-solving strategy to be applied. Our analysis in Dembiczak focused on an explicit teaching in the prior art not because our case law requires it, but because the Board had stated that "the [two cited] references would have suggested the application of . . . facial indicia to the prior art plastic trash bags." Id. at 1000 (emphasis added). We held the Board's obviousness determination legally insufficient because, in addition to failing to make Graham findings, the
Board's analysis was "limited to a discussion of the ways that the multiple
prior art references can be combined to read on the claimed invention", "rather
than pointing to specific information in [the two references] that suggest the
combination". Id. On appeal to this court, the Commissioner of Patents and
Trademarks attempted to defend the Board decision by laying out, using the
Graham factors, a clear—and likely affirmable—rationale establishing the level
of ordinary skill and explaining the motivation to combine. Id. at 1001. We
declined to consider these arguments, newly raised on appeal, stating that they
did "little more than highlight the shortcomings of the decision below." Id.
. . . It is difficult to see how our suggestion test could be seen as rigid and categorical given the myriad cases over several decades in which panels of this court have applied the suggestion test flexibly. Obviousness is a complicated subject requiring sophisticated analysis, and no single case lays out all facets of the legal test. DyStar's argument and the above-cited commentary highlight the danger inherent in focusing on isolated dicta rather than gleaning the law of a particular area from careful reading of the full text of a group of related precedents for all they say that is dispositive and for what they hold. When parties like Dystar do not engage in such careful, candid, and complete legal analysis, much confusion about the law arises and, through time, can be compounded.
[ FOOTNOTE HERE: Indeed, the United States Supreme Court recently granted certiorari in a case involving this court's application of the suggestion test. KSR Int'l Co. v. Teleflex, Inc., 2006 U.S. LEXIS 4912 (June 26, 2006). In KSR, we vacated a district court's grant of summary judgment of invalidity for obviousness. The district court found a motivation to combine not in the references but "largely on the nature of the problem to be solved", which we did not deem erroneous. Teleflex, Inc. v. KSR Int'l Co., 119 Fed. App'x 282, 287 (Fed. Cir. 2005) (unpublished). Rather, we vacated because the court did not explain sufficiently its rationale, and failed to make "findings as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention to make the combination in the manner claimed." Id. at 288 (citation omitted).]
Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense. See, e.g., In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) ("A critical step in analyzing the patentability of claims pursuant to section 103(a) is casting the mind back to the time of invention, to consider the thinking of one of ordinary skill in the art, guided only by the prior art references and , 416 F.2d at 1390 ("Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'"). the then-accepted wisdom in the field."); Motorola, 121 F.3d at 1472 ("[T]he suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art.").
Indeed, we have repeatedly held that an implicit motivation to combine
exists not only when a suggestion may be gleaned from the prior art as a whole,
but when the "improvement" is technology-independent and the combination of
references results in a product or process that is more desirable, for example
because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.
. . . Although this court customarily discusses a motivation to combine as part of the first Graham factor, the scope and content of the prior art, see SIBIA Neurosciences, 225 F.3d at 1356, motivation to combine is also inextricably linked to the level of ordinary skill. If, as is usually the case, no prior art reference contains an express suggestion to combine references, then the level of ordinary skill will often predetermine whether an implicit suggestion exists. Persons of varying degrees of skill not only possess varying bases of knowledge, they also possess varying levels of imagination and ingenuity in the relevant field, particularly with respect to problem-solving abilities. If the level of skill is low, for example that of a mere dyer, as DyStar has suggested, then it may be rational to assume that such an artisan would not think to combine references absent explicit direction in a prior art reference. If, however, as we have held as a matter of law, the level of skill is that of a dyeing process designer, then one can assume comfortably that such an artisan will draw ideas from chemistry and systems engineering—without being told to do so. . .