Lawrence Ebert says that my American article didn’t quite get the Federal Circuit’s obviousness test right:
Of the “specific documentation” point, Lee wrote: “[The CAFC] held that when a patent covers the combination of two elements, it can be declared obvious only if someone can produce another patent, an academic paper, or other formal documentation that pre-dated the patent application and had a specific ‘teaching, suggestion, or motivation’ to combine the elements in the manner described.”
Lee is wrong in stating that specific documentation must be found. In the CAFC case of In re Kotzab, decided in the year 2000 long before KSR v. Teleflex, the CAFC wrote:
“the teaching, motivation, or suggestion may be implicit from the prior art as a whole. rather than expressly stated in the references… In re Kotzab, 217 F.3d 1365, 1370 (CAFC 2000)”
I stand corrected. Mr. Ebert has a JD and I do not, and he doubtless knows this area of the law much better than I do. In my defense, however, I think I’m in good company: in oral arguments, the Supreme Court justices seemed pretty confused by the Federal Circuit’s precedents themselves. If Justice Breyer finds the TSM test confusing, I don’t feel too bad about getting it wrong myself.
In any event, I appreciate Mr. Ebert’s taking he time to point this out.
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