KSR "obvious to try" standard shows up in BPAI WARF case

From the BPAI decision in Appeal 2010-001854, relating to WARF's
US Patent 7,029,913 :

In KSR, the Supreme Court stated that an invention may be
found obvious if it would have been obvious to a person having
ordinary skill to try a course of conduct:
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. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103. 550 U.S. at 421, 127 S.
Ct. 1727. This approach is consistent with our methodology in
In re O'Farrell, 853 F.2d 894 (Fed. Cir. 1988). See Procter &
Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 996-97
(Fed. Cir. 2009); In re Kubin, 561 F.3d 1351, 1359, (Fed. Cir.
2009). O'Farrell observed that most inventions that are obvious
were also obvious to try, but found two classes where that rule
of thumb did not obtain.
First, an invention would not have been obvious to try when the
inventor would have had to try all possibilities in a field
unreduced by direction of the prior art. When “what would have
been ‘obvious to try’ would have been to vary all parameters or
try each of numerous possible choices until one possibly arrived
at a successful result, where the prior art gave either no
indication of which parameters were critical or no direction as
to which of many possible choices is likely to be successful” an
invention would not have been obvious. O'Farrell, 853 F.2d at
903. This is another way to express the KSR prong requiring the
field of search to be among a “finite number of identified”
solutions. 550 U.S. at 421, 127 S. Ct. 1727; see also Procter &
Gamble, 566 F.3d at 996; Kubin, 561 F.3d at 1359. It is also
consistent with our interpretation that KSR requires the number
of options to be “small or easily traversed.” Ortho-McNeil
Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed.
Cir. 2008).

Obviousness was the issue:

The Third Party Requester in this proceeding contends that the
Examiner erred in withdrawing the rejection by applying an improper
standard of obviousness. The Requester contends that “the Examiner
required the expectation of success to be an absolute certainty in order for it
to be considered ‘reasonable.’” (Second Amended Third Party Requester’s
Appeal Brief at 4 (filed May 21, 2009) [hereinafter Br.]). The Requester
also contends that the Examiner “concluded that since human embryonic
stem cell cultures as claimed had not existed before, they were not obvious.
This effectively eviscerated the non-obviousness requirement by collapsing
it into . . . [an] anticipation inquiry.” (Id. at 5).

Back to KSR and "obvious to try"-->

The Supreme Court has held that an invention may be proved obvious
by showing that a combination of elements was “obvious to try.” Where
“there are a finite number of identified, predictable solutions” within the
“technical grasp” of the ordinary skilled artisan, the invention “is likely the
product not of innovation but of ordinary skill and common sense.” KSR,
550 U.S. at 421. A solution is not “predictable” when “the prior art gave
only general guidance as to the particular form of the claimed invention or
how to achieve it.” Bayer Schering, 575 F.3d. at 1347 (quoting from In re
O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988)). The “obvious to try”
standard focuses on the predictability of a solution as a “viable option” to
solve a problem. Bayer Schering, 575 F.3d at 1348. A solution which had
been known to work when applied to one system might, in some
circumstances, be obvious to try in another.

Cross-references:

Reexamination Control 95/000,154

DONALD E. ADAMS, ROMULO H. DELMENDO, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

Ex Parte 7029913 et al

USPTO e-FOIA page

BPAI Reading Room

http://ipbiz.blogspot.com/2008/03/warf-smokes-pubpat-ftcr-in-last-two-re.html

http://www.consumerwatchdog.org/resources/WARFDecision042910.pdf