What is the “obvious to try” rationale in patent law?
The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen 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 not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
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