Suggestion to Combine (RCTA)
In Re Rouffet deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.
- "When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
- "[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.
KSR International Co. v. Teleflex, Inc. also dealt with the issue of combinations. In trying to navigate the murky waters of “ordinary skill in the prior art,” the Court of Appeals for the Federal Circuit (CAFC) established the TSM Test. In this test, the Court looks to the field for a combination of teaching, suggesting, or motivating to combine old elements into the form under scrutiny for patent approval to determine if the combination was obvious at the time. Ideally, the courts would draw the line of obviousness in such a way that it still furthers the ultimate economic purpose of patents and does not deprive the public of knowledge that it can already access and use. The KSR Court advocated an “expansive and flexible” approach in discerning whether an invention ought to be considered patentable. Unfortunately, this conflicts with the CAFC and PTO’s understandable desire to establish simple, clear rules and checklists. In order to manage the volume of appeals and patents that they process daily, both organizations are often forced to opt for clear and imperfect guidelines over the ambiguous and carefully considered approach of the Supreme Court. However, in choosing quick decisions over drawn-out deliberation, the CAFC and PTO have sometimes confused “necessary” conditions with “necessary and sufficient” conditions. This could allow many patents to issue which would in fact have been obvious, thereby depriving the public of useful knowledge rather than disclosing to it something new.
Ultimately, patent law needs to look beyond the listed patents to really serve its purpose. Hints of obviousness might be found in the listed patents, in the state of technology in general, or from somewhere as far removed from the literature as real-world market demands. The PTO and CAFC have to put themselves in the place of inventor.