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Kubin and Permissibility of the 'Obvious to Try' Standard

By Christopher P. Demas

Urged by the Supreme Court's opinion in KSR, the Federal Circuit has addressed its precedent regarding the obvious-to-try standard, positively stating a standard implied in its previous holdings.

In In re O'Farrell, 853 F.2d 894 (Fed. Cir. 1988), the Federal Circuit, though noting that it and its predecessors have repeatedly emphasized that “obvious to try” is not the standard under ' 103, at the same time implicitly indicated that such a standard could be appropriate in certain situations. O'Farrell at 903-904. To confuse the issue further, the court later, in In re Deuel, 51 F.3d 1552 (Fed. Cir. 1995), reaffirmed the O'Farrell court that “obvious to try” was long held not to constitute obviousness, and thus, found the claims in the subject reference not to be obvious. Deuel at 1559. Though, as indicated in Deuel, obvious-to-try was long held not to be the standard under ' 103, the U.S. Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) specifically seized on Deuel to discredit any holding that “obvious to try” was a dead standard. Accordingly, in a post-KSR opinion, the court in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) waded through the O'Farrell and Deuel opinions and, with deference to the opinion of the Supreme Court in KSR, affirmatively stated the implicit indication from O'Farrell that obvious-to-try is a proper standard in certain situations.

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