Obvious to try and non-obviousness post KSR: origins and implications

Abstract

Non-obviousness is often considered 'the ultimate condition of patentability'. It tries to capture 'the technical accomplishment rather than economic implications'. Developments subsequent to Supreme Court's decision in Cuno engineering led to the introduction of non-obviousness as a criterion for patentability under 35 USC § 103 in 1952. In its efforts to bring uniformity, the Federal Circuit adopted the teaching suggestion and motivation test to define the scope of the prior art. In this paper, we proposed to illustrate how a seemingly obvious invention results in a conclusion of non-obviousness and leads to an industrially significant patent by examining the US patent application 11/574781 which deals with the 'process for producing Amlodipine enantiomer in high optical purity' for non-obviousness. We conclude with implications of the 'obvious to try' doctrine in the determination of non-obviousness in pharmaceutical inventions and the steps an applicant could take in establishing non-obviousness of the invention.