Obvious to Try - How it Works

The obvious to try doctrine can be used to determine to the obviousness of an invention, i.e. if the attempt to create the invention is obvious, then the invention is unpatentable. However, using this method is a two step process. First, we need to determine whether the doctrine is applicable to the invention. When is it appropriate to apply it? When can we not apply it? Once we figure out that the doctrine is relevant to the invention, how do we go about determining obviousness from there?

When is the doctrine applicable?
The nature of the prior art for an invention dictates the relevance of the obvious to try doctrine. When the prior art suggests that a claimed invention is possible, but expresses at least some uncertainty regarding whether the invention can be made or will function as expected, then the obvious to try doctrine is relevant to that particular case.

Essentially, this criterion sets up the framework for using obvious to try. If the prior art does not clearly state how the invention could be created/used, then the invention could be looked into further with the obvious to try doctrine to determine its obviousness.

When is the doctrine irrelevant?
If the prior art leaves little or no doubt that the claimed invention can be made and will operate to achieve its stated purpose, then the obvious to try doctrine is not relevant. Under such circumstances, one should analyze the differences between the prior art and the claimed invention in the traditional sense under §103.

Simply put, if the prior art mentions that the claimed invention is 100% possible to create and has a clear purpose, then to determine to obviousness of the invention, one should not use the obvious to try doctrine but instead analyze it with §103. And that makes sense -- if a prior art fully describes the claimed invention, then the attempt to create the invention is longer an issue of obviousness, as the invention is a given fact. Instead, it is more important to look at how the claimed invention differs from the prior art through §103.

When the doctrine is relevant, how do we determine if the invention that was obvious to try is still nevertheless non-obvious?
As we discussed in class, if there exists a need or market pressure to solve the problem with only a finite number of foreseeable solutions to a person of ordinary skills in the art, then the invention designed for targeting the problem is also obvious. On top of that, the degree to which success is unexpected and unpredictable for the invention also plays into its obviousness. Is there is a reasonable expectation of success? If yes, then the invention is obvious. If not, the invention is non-obvious.

When and how to use obvious to try in determining obviousness can be tricky, therefore I will go over some good and bad applications of this doctrine in several example court cases in the next post to hopefully establish a better sense of how it works.

Sources:
http://www.hoffmanbaron.com/releases/HB%20Article%20Reprint_fnl.pdf