Practice Notice on Obviousness - 3 of 4

Pratice Notice on Obviousness - November 2, 2009
(PDF - 45 KB - 6 pages)

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B - "Obvious to try" considerations

The Supreme Court noted that, in "areas of endeavour where advances are often won by experimentation", it may be appropriate to ask whether the claimed subject-matter is obvious because the route to the invention would have been "obvious to try". Patent examiners will henceforth consider whether "obvious to try" is a relevant consideration in determining the obviousness of claimed subject-matter.

The Court provided several factors as being applicable, depending on the nature of the specific case under consideration, in determining whether the matter of a claim would have been "obvious to try". The factors set out by the Court, with the caution that the list is not exhaustive, included:

1. Is it more or less self-evident that what is being tried ought to work? Are there a finite number of identified predictable solutions known to the person skilled in the art?
2. What is the extent, nature and amount of effort required to achieve the invention? Are routine trials carried out or is the experimentation prolonged and arduous, such that the trials would not be considered routine?
3. Is there a motive provided in the prior art to find the solution the patent addresses?

Where the questions (A) and (C) can be answered in the affirmative, and the conclusion at item (B) is that the matter of the claim would be arrived at by routine trials that were not prolonged and arduous, it can be concluded that the subject-matter of the claim is obvious since it would have been "obvious to try" to identify the claimed matter from among a finite number of likely solutions one of which more or less self-evidently ought to work.

Little guidance exists as to which areas of endeavour are those in which advances are often won by experimentation. In cases where "obvious to try" considerations are not appropriate, it is extremely unlikely that the various factors of the approach could be satisfied. Where there are a finite number of identified, predictable solutions known to the person skilled in the art and a motivation provided in the prior art to find the solution the application addresses, it can be presumed that one is in an area of endeavour where advances are often won by experimentation. The "threshold" question of whether "obvious to try" is applicable is considered to be inherently addressed when the factors of the test itself are considered.

Where an "obvious to try" approach is deemed appropriate, the Court provided several factors that should be considered, with the caution that the list is not exhaustive. Framed as questions to be asked when assessing compliance with section 28.3 of the Patent Act, these are:

1. Is the person skilled in the art aware, in view of the prior art and their common general knowledge, that a limited number of predictable and identifiable solutions exist to the same or a similar problem, such that they would believe that one of those solutions more or less self-evidently ought to work to solve the problem being addressed?

   It is not necessary that it be obvious which of the limited number of solutions would solve the problem, nor which is best suited to this purpose, but if the claimed solution is unrelated to this limited number of predictable and identifiable solutions a conclusion of "obvious to try" is unlikely to be warranted.

2. Could the person skilled in the art be expected to arrive specifically at the solution claimed, starting from the limited number of solutions conceptually identified in step (A), without inventive step or undue burden? That is, would the solution be arrived at by routine and predictable methods, and without requiring prolonged and arduous effort.

3. Does the person skilled in the art, in view of the prior art, have a motive to find the solution the patent addresses?

   While the existence of motivation, in the broadest sense, to solve problems in the area of endeavour through scientific inquiry may be enough to justify an "obvious to try" inquiry, a more specific motivation to work along similar lines to the inventor is necessary to sustain a conclusion that the claimed invention was "obvious to try". The person skilled in the art must have been motivated to conduct experiments in the area of the invention, aimed at solving the same or a similar problem to that addressed by the inventor by identifying a solution such as that defined in the claim under consideration.

   As noted above, the attitudes, prejudices and expectations of the person skilled in the art, and their awareness of the trends in their field, are relevant factors to consider in this regard, and are assessed in light of the state of the prior art.

It should be remembered that "obvious to try" considerations are used to determine whether the subject-matter of a claim is the result of ingenuity and, by consequence, is unobvious. Factors (A) to (C) might be thought of as asking whether it was obvious to search for a solution to the problem addressed by the inventors (the motivation factor) and whether the route to the claimed subject-matter was also obvious. If there was no invention in either conceiving of the solution nor reducing it to a practical form, the claimed subject-matter is not the result of an inventive step and is therefore obvious.

The Office considers that assessing whether the route to the invention was "prolonged and arduous" must be evaluated objectively by the examiner, taking into account the nature of the person skilled in the art and the knowledge and climate in the relevant field or fields existing at the claim date. The subjective experience of the inventors will not be considered relevant unless it can be established that it reflects that expected of the hypothetical person skilled in the art.

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