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Federal Circuit upholds Board In re Kubin – Resurrects O’Farrell Test of “Obvious to Try”

On April 3, 2009, a three judge panel of the Court of Appeals for the Federal Circuit unanimously affirmed the decision that the Board of Patent Appeals had reached in Ex Parte Kubin. The Board’s decision is discussed in the case note posted below, as are the precursor cases In re Deuel and the leading written description requirement decision, Lilly vs. UC. Keyboards of commentators more august than I will be overheated discussing this decision, but two aspects stand out as particularly notable about In re Kubin, 2008-1184 (Fed. Cir. April 3, 2009)(Serial No. 09/667,859). (A link to a this decision is available at the end of this post.)

The first is that the Federal Circuit faced up to the criticism that the Supreme Court had leveled at the Fed. Cir.’s “obvious to try” test, as the Fed. Cir. had applied it to find a novel DNA sequence unobvious In re Deuel more than twenty years ago. The Supreme Court had concluded: “In that instance [the art worker pursuing “known options” that would lead to “anticipated success”] the fact that a combination was obvious to try might show that it was obvious under s. 103.” The Fed. Cir. wrote: “Under KSR, it’s now apparent ‘obvious to try’ may be an appropriate test in more situations than we previously contemplated.”

But under what circumstances? The panel managed to give the Federal Circuit a pat on the back by falling back on a decision in the appeal of a biotech application that was twenty years old, In re O’Farrell, 853 F.2d 894 (Fed. Cir. 1988), stating: “The Supreme Court’s admonition against a formalistic approach to obviousness in this context actually resurrects this court’s own wisdom in In re O’Farrell, which predates the Deuel decision by some seven years. The Kubin panel then went on to extensively discuss O’Farrell, in which Judges Markey, Rich and Nies found the second generation method of cloning method claims obvious over the inventors’ own art.

The Kubin panel revived “obvious to try” rebuttal in the two situations in which the O’Farrell panel endorsed its use: when arriving at the invention would require undue picking and choosing from a plethora of “parameters” and “choices” so that the end result would be, in effect a patentable “invention of selection” (as our EP colleagues might say). The second situation is when the art only provides what has been referred to as an “invitation to experiment” with no, or only very general guidance as to how to succeed in reaching the invention.

After the biotechnology patent bar recovered from the shock of seeing recombinant DNA claims found obvious in this still young art, in which nearly every advance had contained patentable subject matter, we latched onto a single paragraph in O’Farrell that appeared in the opinion pages prior to the “obvious to try discussion”, in which the panel discussed the prior art reference: “Polisky contained detailed enabling methodology for practicing the claimed invention, a suggestion to modify the prior art to practice the claimed invention, and evidence suggesting that it would be successful.” (This sentence was also quoted by the Kubin panel.) Many of us called this the O’Farrell tripartite test, and turned it on its head. We would argue that the methodology in a prior art publication was absent or incomplete or even inoperable, that there was no suggestion of the modifications required to arrive at the invention and that there was no reasonable evidence that any modifications would be successful. We would argue that our client’s invention was in an area that was so unpredictable that actual reduction to practice should be required, not just an Examiner’s speculation that the modifications would yield the invention. Those were the good old days of biotech patent prosecution, and while these arguments still have considerable legal weight, those days are far behind us.
In Re Kubin and Goodwin

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