Market pressure may offer a sufficient obvious to try rationale to combine prior art references when (1) market demand drives design trends for such products, (2) there is a design need or market pressure to solve a problem, and (3) there are a finite number of solutions that could have produced the desired outcome.
Background / Facts: This case concerns industrial machines known as “screeners” that use progressively smaller openings to sort rocks and other forms of aggregate material into piles of similarly-sized material, such as sand or gravel. The claims recite a screener and corresponding conveyor that can handle a greater capacity of sorted material (thereby generating output at a faster rate) and, at the same time, comply with road permit regulations that restrict the width of machines that can be legally transported on public roads to their worksite. This is achieved by a vertical-folding screener combined with a side-folding conveyor, which created a compact design. It is undisputed that the prior art teaches a vertical-folding screener (“Dominator”) and a side-folding conveyor (“Masterstock”). The patentee argued, however, that there wasn’t any “reason to combine [the prior art] machines to result in the invention other than” hindsight.
Issue(s): Whether there is a clear motivation to combine the vertical-folding Dominator screener with the side-folding Masterstock conveyor.
Holding(s): Yes. It was known that new wider machines would present a problem for roadways and “[t]he side-fold taught by the prior art Masterstock conveyors provided an obvious solution to this problem.” “This is because, following KSR, this is a case where, in our view, ‘market demand … dr[ove] design trends,’ … ‘there [wa]s a design need or market pressure to solve a problem,’ and ‘there [were] a finite number of … solutions’ that could have produced the desired outcome.” Here, “the apparent solution to maintain a compact machine for transport while increasing the screener’s output capacity required a machine that folded the lateral conveyors in as compact a manner as possible. This further suggests that ‘ordinary skill and common sense,’ rather than innovation,” led to the claimed invention.