What is the ‘reasonable expectation of success’ criterion in obviousness analysis?
What is the ‘reasonable expectation of success’ criterion in obviousness analysis?
The ‘reasonable expectation of success’ is a crucial criterion in determining obviousness in patent examination. According to MPEP 2143, this concept is particularly important when considering whether a claimed invention would have been obvious to try. The MPEP states:
“Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (discussing rationale underlying the motivation-suggestion-teaching test as a guard against using hindsight in an obviousness analysis).”
The ‘reasonable expectation of success’ criterion involves:
- Assessing whether a person of ordinary skill in the art would have had a reasonable expectation of success in combining or modifying prior art elements to arrive at the claimed invention.
- Considering the level of predictability in the art and the specific teachings of the references.
- Evaluating whether the prior art would have suggested to one of ordinary skill that the proposed modification or combination could be carried out with a reasonable likelihood of success.
- Recognizing that absolute predictability is not required; only a reasonable expectation of success is necessary.
This criterion helps prevent hindsight bias by ensuring that the proposed combination or modification would have been considered viable by those skilled in the art at the time of the invention.
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