What Is An Obvious Invention (Section 103 Rejection)?

1. Case Name: – Graham v. John Deere Co., 383 U.S. 1 (1966)

Date(s): – Argued October 14, 1965, | Decided February 21, 1966 

Case Brief: – This case involved the validity of subject patents considering the Patent Act of 1952. 

• In the case of Graham v. John Deere Co., Graham filed a lawsuit alleging that the defendant had infringed on a patent for a device that was designed to absorb shock from plow shanks in rocky soil to prevent damage to the plow. The patent consisted of a combination of pre-existing mechanical elements.  
• The Fifth Circuit originally ruled that the patent was valid, stating that a combination can be considered patentable if it leads to an “old result in a cheaper and more advantageous way.”  
• However, in 1964, the Eight Circuit overturned this decision and ruled that since the patented combination did not produce a new result, the patent was not valid.  
• The District Court and the Court of Appeals also upheld this decision, stating that the patent did not meet the requirements of being “non-obvious” to a person skilled in the relevant field, as outlined in 35 U.S. Code § 103 of the Patent Act of 1952, and was therefore invalid. 

2. Case Name: – KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) 

Date(s): – Argued November 28, 2006 | Decided April 30, 2007 

Case Brief: – Teleflex sued KSR International, claiming that one of KSR’s products infringed Teleflex’s patent on connecting an adjustable vehicle control pedal to electronic throttle control. 

• The argument put forth by KSR was that the combination of two elements was so obvious that it was not eligible for a patent. 
• On April 30, 2007, the Supreme Court judgment states that the disputed claim 4 of the patent was obvious under the requirements of 35 U.S.C. §103.  
• The Court of Appeals examined the matter in a strict and restrictive way and found it to be in conflict with 35 U.S.C. §103 by using the “teaching-suggestion-motivation” (TSM) test.