Intellectual Property Law

Kubin decided: Federal Circuit provides guidance for application of KSR in biotechnology

By McKee, Voorhees & Sease, P.L.C.

Today the Federal Circuit decided the appeal in In re Kubin, a case dealing with how the Supreme Court's KSR decision will apply in the field of biotechnology.  The decision is available here.  We previously blogged about the BPAI decision here and the Federal Circuit's oral arguments here.  Those posts have detailed descriptions of the facts in the case.

The Federal Circuit affirmed the Board's finding that the claims were obvious.  As to the applicability of KSR, and specifically the "obvious to try" rational that KSR permits in some cases, the court noted the Supreme Court did not limit KSR to only "predictable arts."  Thus, a claim in biotechnology can sometimes be obvious if it would be "obvious to try," noting that language to the contrary in the Deuel case is no longer good law.

Instead, the Federal Circuit quoted its 1988 decision in In re O'Farrell, stating:

It is true that this court and its predecessors have repeatedly emphasized that "obvious to try" is not the standard under § 103. However, the meaning of this maxim is sometimes lost. Any invention that would in fact have been obvious under § 103 would also have been, in a sense, obvious to try. The question is: when is an invention that was obvious to try nevertheless nonobvious?

On this point, the court observed there are at least two such situations.  The first is the inverse of the situation contemplated in KSR where a finite number of identified, predictable solutions exist.  Such a case exists 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."  Another situation where an invention would be obvious to try but nonobvious is when "what was 'obvious to try' was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it."

Click below for more detail of the Federal Circuit's analysis of Kubin's claims.

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Full post as published by FileWrapper on April 03, 2009 (boomark / email).