Since the PHOSITA standard turned to be too ambiguous in practice, the U.S. Supreme Court provided later two more useful approaches which currently control the practical analysis of non-obviousness by patent examiners and courts: Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) gives guidelines of what is "non-obvious", and KSR v. Teleflex (2006) gives guidelines of what is "obvious".
Another contentious area is contradictions between non-obviousness and patentable subject matter requirements: whereas non-obviousness can be easily met, when inventor discovers something new and unexpected (like the discovery of the DNA segments corresponding to the fetus's father in the blood of pregnant women in Ariosa v. Sequenom),[1] a patent will be denied, as not meeting statutory subject matter requirement, "if the APPLICATION [of this discovery] merely relies upon elements already known in the art.
"[2] (see also Mayo Collaborative Services v. Prometheus Laboratories, Inc. and Association for Molecular Pathology v. Myriad Genetics, Inc.) The alleged rationale for this dichotomy is to prevent broad patent claims that would inhibit rather than "promote the Progress of Science", as required by the Copyright Clause of the US Constitution.
[3] Constitutionally, the non-obviousness requirement is established by Article 1, Section 8, Clause 8: "The Congress shall have the power ... to promote the Progress of Science .., by securing for limited Times to ...
The word Discoveries establishes the level to which the contribution to the Progress of Science must rise to deserve the temporary monopoly.
[citation needed] The next Patent Act of 1793 did not have the important language, but stated that "simply changing the form or the proportions of any machine, or compositions of matter, in any degree, shall not be deemed a discovery."
Despite beginning to develop the PHOSITA approach, the Court did not give practical means to determine what how much inventiveness deserves a patent.
During the period from 1851 to 1951, several new cases related to the non-obviousness of claimed subject matter in patents reached the Supreme Court.
[6] One notable example of this struggle is the positions of Justice Douglas in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.[7] in 1950, where he opined that to deserve a patent, an invention "had to serve the end of science—to push back the frontiers of chemistry, physics, and the like"; while two years prior in Funk Bros.
The duality between the non-obviousness requirement and an overbroad scope of claims is expected to receive further development by the U.S. Supreme Court in due course.
Based on its decision that a combination "which only unites old elements with no change in their respective functions" is unpatentable because such a patent would "obviously withdraw what already in known into the field of its monopoly and diminish .
Although the time validated the pragmatic approach (does the patent promote the progress of science or does it take away from the public domain), the for- criterion of "unusual or surprising consequences" turned out to be too ambiguous and too high in practice.
The most important case law development during this period was the 1966 US Supreme Court decision in Graham v. John Deere Co., which suggested criteria that must be considered in a practical analysis of non-obviousness: At the same time the newly established United States Court of Appeals for the Federal Circuit, which was supposed to establish a uniform case law for patent validity appeals, started to reject the "unusual and surprising approach" altogether and introduced the "teaching, suggestion and motivation" (TSM) test in ACS Hosp.
Thus, in general the critical inquiry, the Federal Circuit maintained, is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements.
[citation needed] In other words, an explicit prior art teaching or suggestion to make a particular modification is sufficient, but not required for a finding of obviousness.
As of 2016, the guidelines for establishing a prima facie case obviousness adopted by the USPTO based on the KSR v Teleflex decision are as follows: The KSR decision has been criticized because it apparently replaced the requirement of non-obviousness with the requirement of non-predictability, thus making it more difficult to get patents in the predictable arts, and creating a contradiction with some Graham's factors such as "failures of others".
2010 (see Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories, Inc., Ariosa v. Sequenom), the US Supreme Court developed another (absent in the legislative statute) requirement for patentable subject matter, which mandates in addition to an inventive step (such as a discovery of natural phenomenon) another "inventive application" in order to prevent a monopoly on the discovery itself.