Supreme Court questions Federal Circuit's obviousness test: is it "gobbledygook"?

November 29, 2006
Post by Blog Staff

In oral argument before the Supreme Court in KSR International Co. v. Teleflex, Inc., several Justices appeared uncomfortable with the Federal Circuit's "teaching-suggestion-motivation" (TSM) test for obviousness. Justice Scalia, in his typical direct style, characterized the TSM test at various times as "gobbledygook," "irrational," and "meaningless." Other Justices, including Chief Justice Roberts and Justice Breyer in particular, also seriously questioned the TSM test, particularly as the exclusive way to show an invention is obvious.Other times, however, the Justices expressed reluctance to upset the TSM test, as it has been used to determine the patentability of all patent applications filed for more than twenty years. For example, Justice Souter asked KSR's counsel, "If we see it your way, are there going to be 100,000 cases filed tomorrow morning?"At this point, the most likely outcome appears to be that the TSM test will be retained, but will not be the exclusive means to show an invention to be obvious. The real question then becomes how else obviousness can be proven, and what guidance (if any) the Court will provide on the issue.A decision is not expected until at least 2007.

Post Categories

Comments (0)
Post a Comment

Captcha Image
Return to the Filewrapper Blog

Search Posts


The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.


McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.