Kubin and Permissibility of the 'Obvious to Try' Standard

In In re O'Farrell, 853 F.2d 894 (Fed. Cir. 1988), the Federal Circuit, though noting that it and its predecessors have repeatedly emphasized that “obvious to try” is not the standard under ' 103, at the same time implicitly indicated that such a standard could be appropriate in certain situations. O'Farrell at 903-904. To confuse the issue further, the court later, in In re Deuel, 51 F.3d 1552 (Fed. Cir. 1995), reaffirmed the O'Farrell court that “obvious to try” was long held not to constitute obviousness, and thus, found the claims in the subject reference not to be obvious. Deuel at 1559. Though, as indicated in Deuel, obvious-to-try was long held not to be the standard under ' 103, the U.S. Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) specifically seized on Deuel to discredit any holding that “obvious to try” was a dead standard. Accordingly, in a post-KSR opinion, the court in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) waded through the O'Farrell and Deuel opinions and, with deference to the opinion of the Supreme Court in KSR, affirmatively stated the implicit indication from O'Farrell that obvious-to-try is a proper standard in certain situations.

Specifically, the court in Kubin held that there are two situations in which obvious-to-try is an appropriate argument under ' 103, namely, 1) where a skilled artisan merely pursues “known options” from a “finite number of identified, predictable solutions,” and 2) where the improvement is no more than the predictable use of prior art elements according to their established functions. Kubin, 561 F.3d at 1359, quoting KSR, 550 U.S. at 417 and 421. Conversely, the court in Kubin reiterated that obvious-to-try is an improper argument 1) where what would have been allegedly obvious-to-try was to vary all parameters or try each of numerous possible choices until arriving at a successful result, where the prior art gave either no indication of critical parameters or any other direction as to which of many possible choices was likely to be successful, and 2) where what was allegedly obvious-to-try was to explore new technology or a general approach that seemed promising, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it. Id.