Examination Guidelines Regarding Obviousness

Ever since the court’s decision in KSR Int'l Co. v. Teleflex Inc., the guidelines for determining obviousness have changed. Below is a summary of the several reasons an examiner can employ to support an obviousness rejection:

(A) Combining prior art elements according to known methods to yield predictable results;

(B) Simple substitution of one known element for another to obtain predictable results;

(C) Use of known technique to improve similar devices (methods, or products) in the same way;

(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

(E) ''Obvious to try'' - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

A patent applicant can challenge the examiner’s decision by arguing:

(1) One of ordinary skill in the art could not have combined the claimed elements by known methods (e.g., due to technological difficulties);

(2) The elements in combination do not merely perform the function that each element performs separately;  

(3) The results of the claimed combination were unexpected," as well as evidence relating to the secondary considerations enunciated in Graham(long-felt need, commercial success, and failure of others). 

In class, I was still confused about (E) – the “obvious to try” doctrine. Hence, I did some additional research and found out that the obvious to try doctrine was originally developed by Judge Rich in Huellmantel, Tomlinson, and O’Farrell. According to Judge Rich, "obvious to try doctrine is relevant when “a prior art suggests the possibility of a claimed invention, but expresses or infers at least some uncertainty that the invention can be made or will function as expected”. The standard to determine whether this doctrine should be employed or not is based on “whether there is a reasonable expectation of success”.

Does any of these doctrines surprise you or confuse you? Why?