Inventors frequently ask whether the Patent Office will grant them a patent on their invention. The general answer is that the Patent Office will grant a patent on inventions that are novel (i.e., new) and non-obvious in light of technology existing at the time the patent application was filed. The government does not have an incentive to grant a patent to inventors for inventions that already exist (i.e., not new) or is an obvious variant in light of existing technology.
The issue of novelty is a much simpler issue compared to the issue of non-obviousness. The non-obviousness issue is an objective issue based on the scope and content of the prior art, the level of ordinary skill in the art, the difference between the claimed invention and the prior art and objective evidence of nonobviousness. Nonetheless, the obviousness issue is open to wide variance based on which person you ask. For example, the sophisticated person might determine that an invention is obvious due to its simplicity, whereas the less sophisticated person might determine that the same invention is non-obvious due to its complexity.
A couple of years ago, the U.S. Supreme Court reviewed the issue of what types of inventions are non-obvious in KSR Int. Co. v. Telefex Inc., et al. (S. Ct. 2007). In that case, the Supreme Court reshaped the then existing obviousness test which was characterized as rigid to one that is more flexible. In one aspect of the opinion, the Supreme Court rejected an obvious to try test which stood for the proposition that a combination is not obvious merely because it is a variation that is obvious to try. Rather, the Supreme Court stated that when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under SECTION 103.
On April 3, 2009, the Federal Circuit provided further commentary on the “obvious to try” test in In re Kubin (Fed. Cir. 2009). In a nutshell, the Federal Circuit re-emphasized the principles of obviousness that the U.S. Supreme Court laid out in KSR in that (1) an invention is obvious if a person of ordinary skill is pursuing known options from a finite number of identified, predictable solutions or (2) an invention is non-obvious if the improvement is more than the predictable use of prior art elements according to their established functions.
The Federal Circuit further made clear that the KSR decision is not limited to predictable arts but also applies to the unpredictable arts such as biotech inventions without categorical exceptions to types of inventions.