When it comes to inventions, Toolbox has the desire, but lacks the
know-how. In any event, if Toolbox invented something, it would no
doubt fail any standard of obviousness under the patent law. Toolbox
even daydreams of taking its invention before a panel of whatever
experts, patent examiners, patent lawyers, you name 'em, and hearing
under-the-breath mutterings, "Bzz, bzz, bzz, could that be more
obvious? That thing doesn't just have prior art; it has prior music and
dance, too. He might as well have reinvented the wheel for all that
thing is worth." Of course, to yours truly, the obvious wouldn't have
seemed so obvious. And what Toolbox finds most ironic about obviousness
doctrine is that, given the Supreme Court's decision in KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398 (2007), even it wasn't quite so obvious, which is why so
many scholars are writing about obviousness in the wake of KSR.
Toolbox has one of those writings, Post-KSR Obviousness, a white paper by Karen Canaan (Sheppard Mullin Richter & Hampton LLP) that reviews obviousness doctrine before and after the Supreme Court's decision, offering suggestions on how to prepare and prosecute a patent post-KSR. And it would appear that after KSR, Toolbox's fear of obviousness is overblown, as the Court acknowledges, on a certain level, that there is nothing new under the sun. Before KSR, the U.S. Court of Appeals for the Federal Circuit had applied the "teaching, suggestion, motivation" or TSM test to determine obviousness under 35 U.S.C. §103(a): "in order for an invention to be held obvious, there must be a teaching, suggestion, or motivation to combine the prior art elements." The Supreme Court held that the lower court had been applying the TSM test too narrowly and rigidly. And while not throwing out the test altogether, here's the part of the Court's decision that made Toolbox happy, as quoted by Ms. Canaan: "[i]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known." KSR, 550 U.S. at 419. Maybe it's time for Toolbox to dust off some of those old, seemingly obvious, ideas.
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