The dissent takes one sentence out of the majority opinion and tries to paint the majority as regulating secondary considerations to rebuttal status. That’s not what they did.

But (hot take here) there’s nothing legally incorrect if they did. The dissent quotes Graham a lot, but this case is stunningly similar to Toledo Pressed Steel v. Standard Parts. There, as here, the invention was aggregation of known elements in the prior art for their usual purpose. The court held that:

On the records before us, it is impossible to hold that production of the patented device required more than mechanical skill and originality attributable to those familiar with the art of protecting flames of kerosene and other burners.

The patentee argued a long felt need, but the response was: plaintiff cites efforts to find something useful to protect open-flame torches from extinguishment by wind or rain put forth by one engaged in operation of a street railway and by another employed by a manufacturer of lanterns. But it does not appear that either was familiar with the relevant prior art. Nor is there any evidence of general or widespread effort to solve the problem here involved.

Instead the holding was that mere aggregation (i.e. simple combination for predictable results) is not patentable.

A&P Tea Co noted that “Commercial success without invention will not make patentability.” The only way to read that sentence is that secondary considerations are exactly what they claim to be – secondary. There appears to be no requirement that secondary considerations be taken at the same time or given the same weight as the other factors. There is simple a command they be considered.

And in fact, even Graham was not so categorical in its statement. Instead it said: Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

Secondary considerations MIGHT be utilized for the purpose of enlightening the subject matter.

KSR quoted the above and said: While the sequence of these questions might be reordered in any particular case, the factors continue to define the inquiry that controls.

In short – the purpose of secondary considerations is to provide background for the underlying question of whether the differences between the claimed invention and the prior art are sufficient to be non-obvious to one of ordinary skill. There’s nothing wrong with considering secondary considerations after the main analysis. There’s probably nothing wrong with barely considering the secondary considerations at all. Secondary considerations aren’t an element of non-obviousness, they’re indirect facts relevant to filling in the blanks.

There’s a whole mess of cases where the Supremes constantly point out that simply combining known things for their usual purpose is never inventive (sidenote – looking at you, software people). This instant case is simple aggregation. There’s no problem with looking at all of the evidence and saying what A and P Tea essentially said – Secondary indicia of non-obviousness absent invention will not make patentability.