What are the key elements of the ‘obvious to try’ rationale in patent obviousness?

What are the key elements of the ‘obvious to try’ rationale in patent obviousness?

The ‘obvious to try’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, the key elements of this rationale are:

• A finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
• A finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success;
• Whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The MPEP states: “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.”

This rationale encourages examiners to consider whether the claimed invention would have been obvious to try based on the state of the art and the finite number of potential solutions.

To learn more:

• obvious to try
• patent examination
• obviousness rationale
• finite solutions