Obviousness: Is a Reasonable Expectation of Success Sufficient

by Dennis Crouch

In Vanda v. Teva, the Federal Circuit confirmed the obviousness of Vanda’s claims covering use of tasimelteon (Hetlioz) to treat circadian rhythm disorders (Non-24-Hour Sleep-Wake Disorder).  Teva and Apotex, filed Abbreviated New Drug Applications (ANDAs) with the FDA seeking to market generic versions of the $100m+ drug.  Vanda sued, but lost on obviousness grounds — with the court holding that the claimed combination was obvious because it was directed to a set of known elements and a person of ordinary skill would have a “reasonable expectation of success” in reaching the resulting invention.  The rulings here included a conclusion that – even if the particular limitations were not obvious, it would have been obvious for a skilled artisan to try them out.

Vanda argues that the law of obviousness requires more than simply a reasonable expectation of success. Rather, in their petition to the Supreme Court, the patentee argues that the resulting invention must have been “predictable” or an “plainly indicated by the prior art.”

The question presented is: Whether obviousness requires a showing of “predictable” results, as this Court held in KSR, or a mere “reasonable expectation of success,” as the Federal Circuit has held both before and after KSR?


A new amicus brief strongly supports the petition with an interesting historical review of obviousness doctrine from the past 150 years.  The brief, filed by The National Association of Patent Practitioners and Professor Christopher Turoski (current NAPP president) brief argues that the Federal Circuit’s “reasonable expectation of success” standard for assessing obviousness departs from longstanding Supreme Court precedent on obviousness that was subsequently codified in 35 U.S.C. § 103.  NAPP Amicus Brief.

Under Pre-1952 “Invention” Standard

The brief traces the obviousness requirement back to Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1850), where the Court held that simply substituting one known material for another in an otherwise unchanged device was obvious and lacked “that degree of skill and ingenuity which constitute essential elements of every invention.” In the 100 years of “invention” cases following Hotchkiss, the Court consistently held that an invention “must be the result of invention, and not the mere exercise of the skill of the calling or an advance plainly indicated by the prior art.” Altoona Publix Theatres, Inc. v. Am. Tri-Ergon Corp., 294 U.S. 477 (1935). The key question was whether the advance would “occur to any mechanic skilled in the art” or was “plainly foreshadowed by the prior art.” Loom Co. v. Higgins, 105 U.S. 580, 591 (1881); Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 302 U.S. 490, 498 (1938).  None of the Supreme Court cases, either pre- or post-1952, rely upon reasonable expectation of success as a determinative factor in assessing the obviousness of an invention.

In Altoona Publix Theatres, the patentee sought to enforce its patent covering covering the use of a flywheel to sound recording and reproduction equipment in order to make the film movement more uniform. The Supreme Court held the patent claims invalid for lack of invention. The Court explained that a flywheel was a very old and common mechanism for improving uniformity of motion in machinery. Its addition here merely involved “the skill of the calling” rather than the inventive faculty, as the flywheel’s use was plainly indicated by prior art showing flywheels applied in other sound recording devices. The Court relied on longstanding precedent that an improvement is not patentable unless it required invention, not just ordinary skill, and was not “plainly indicated” in the prior art.

An improvement to an apparatus or method, to be patentable, must be the result of invention, and not the mere exercise of the skill of the calling or an advance plainly indicated by the prior art. . . . The inclusion of a flywheel in any form of mechanism to secure uniformity of its motion has so long been standard procedure in the field of mechanics and machine design that the use of it in the manner claimed by the present patent involved no more than the skill of the calling. . . . [The prior art] plainly  foreshadowed the use made of the flywheel in the present patent, if they did not anticipate it. The patentees brought together old elements, in a mechanism involving no new principle, to produce an old result, greater uniformity of motion. However skilfully this was done, and even though there was produced a machine of greater precision and a higher degree of motion-constancy, and hence one more useful in the art, it was still the product of skill, not of invention.

Altoona Publix Theatres, Inc. v. Am. Tri-Ergon Corp., 294 U.S. 477 (1935).  In Altoona, the court thus concluded that the added flywheel failed this “invention” test, so the patent claims were held invalid.  The standard in Altoona of “plainly indicated” in the prior art is foreshadowed in the Supreme Court’s prior cases such as Slawson v. Grand Street, P.P. & F.R. Co., 107 U.S. 649 (1883) (cannot patent “an idea which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures”); see also Altantio Works v. Brady, 107 U.S. 192 (1883).

Similar “plainly indicated” language comes from the Supreme Court’s decision in Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 302 U.S. 490 (1938). The invention at issue in the case was an attachment for flat knitting machines to allow reinforcing and split-seam designs to be added to the knitted fabric. The Court held the patent claims invalid as obvious and embodying no more than “the skill of the calling.”

The Court explained that “[t]he addition of a new and useful element to an old combination may be patentable; but the addition must be the result of invention rather than the mere exercise of the skill of the calling, and not one plainly indicated by the prior art.” Id.

One confusing element of this history is that the Supreme Court also began to talk of invention in terms of the “flash of creative genius” or other similar language. See Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941). According to Cuno Engineering, to be patentable, a device “must reveal the flash of creative genius, not merely the skill of the calling.” Id.

Section 103 Codifies Prior Precedent

Prior to 1952, the patent act did not include a statutory obviousness standard. Rather, both the statute and the US constitution simply required an “invention.”

Congress created Section 103 obviousness standard in the 1952 Patent Act that we all rely upon today.  But, in its key and still leading analysis of the statute, the Supreme Court explained that the new law was “intended merely as a codification of judicial precedents embracing the Hotchkiss condition.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Assessing obviousness under § 103 thus follows the Hotchkiss line of cases by determining whether the advance was “plainly evident from the prior art” such that one skilled in the art “would immediately see” that it was obvious based on the existing disclosures.

Of course, one change with the addition of Section 103 is the final sentence of the provision stating that the “manner in which the invention was made” will not negate patentability. The legislative history and Graham are both clear that this provision was intended “to abolish the test [Congress] believed [the Supreme Court] announced in the controversial phrase ‘flash of creative genius,’ used in Cuno.”  What is left then is a focus on whether the invention would be within the mere skill of the calling and plainly evident from the prior art. In its most recent analysis of KSR, the court did not use the plainly evident standard, but rather focused on situations where the elements of an invention were all known and the combination was nothing more than “predictable use of prior art elements.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Throughout this time the Supreme Court has never used a “reasonable expectation of success” test.

Departure from Binding Precedent

According to the petition and the amicus brief, the Federal Circuit’s “reasonable expectation of success” test sets a lower bar, finding obviousness wherever a skilled artisan might reasonably expect to achieve the result, even if it was not plainly foreshadowed in the prior art.  This includes situations where it might be obvious to pursue a research question — but where the answer to the question is unknown or unpredictable.

The first court reference that I have found for “reasonable expectation of success” standard appears to have originated in the case of Cmmw. Engr. Co. of Ohio v. Watson, 293 F.2d 157 (D.C. Cir. 1961).The Patent Office Board had originally stated that “Appellant has merely applied an old process to another analogous material with at least reasonable expectation of success. It is well settled that this does not constitute invention.”  The District Judge affirmed this holding in a Section 145 action, as did the D.C. Circuit Court on appeal. Cmmw. Engr. Co. of Ohio v. Watson, 188 F. Supp. 544 (D.D.C 1960), aff’d, 293 F.2d 157 (D.C. Cir. 1961).

I did also find a 1925 decision by the Commissioner of Patents office affirming a rejection. Ex parte McElroy, 337 Off. Gaz. Pat. Office 475 (1925).  In the case, the patent applicant argued that the cited reference was not sufficient to render the invention unpatentable — arguing “a reference must do more than suggest a possibility, that it must also postulate a reasonable expectation of success.”  The Assistant Commissioner rejected this argument, stating that Richter “carefully sets out the process of the present application and indicates its success.” The decision appears to agree with the  reasonable expectation of success standard, but concluded that the reference provided at least that level of teaching. But, it is not clear to me when this standard became sufficiently “settled” as recited in the 1960-61 Commonwealth Engineering decisions.  It was not until 1995 that reasonable-expectation-of-success was added to the MPEP, but by that time there had already been a number of Federal Circuit decisions on point.

In any event, I hope the Supreme Court will take up this case and push it forward — hopefully further developing obviousness doctrine.  Respondents in the case Teva and Apotex had waived their right to respond, but the Supreme Court expressed some interest in the case by requesting a response in a February 15 order (due March 18, 2024).


  • Vanda Pharmaceuticals Inc., Petitioner, represented by Paul Hughes (McDermott Will & Emery)
  • Apotex Inc. and Apotex Corp., Respondent, represented by Aaron Lukas (Cozen O’Connor)
  • Teva Pharmaceuticals USA, Inc., Respondent,  represented by J.C. Rozendaal (Sterne Kessler)

Amici Curiae

  • American Council of the Blind, Blinded Veterans Association, and PRISMS, Amicus Curiae, represented by Mark Davies (Orrick)
  • Professor Christopher M. Turoski and The National Association of Patent Practitioners, Amicus Curiae, represented by Ryan Morris (Workman Nydegger)
  • Salix Pharmaceuticals, Inc. and Ocular Therapeutix, Inc., Amicus Curiae, represented by Justin Hasford (Finnegan)


83 thoughts on “Obviousness: Is a Reasonable Expectation of Success Sufficient

  1. 8

    A couple thoughts.

    This isn’t new (I’ve posted it here before) but the clearest and most common example of “hindsight bias” in the obviousness analysis is not only expressly precluded by the statute (because it’s post-filing evidence) but it’s also (under current case law) a bias in favor of finding non-obviousness. Yes, I’m speaking of “commercial success”.

    Second, where the contemporary obviousness test is not a great fit are the very rare cases where (1) the inventor wasn’t trying to solve a problem but simply stumbled on or discovered the invention and determined it was worth patenting; and/or (2) where literally nobody else was working on the *general problem* that is addressed by the invention. On the other hand, these facts are terrible for infringers of the patent who will be forced to concoct a “competing” story or take a license.

    I don’t know if anyone has attempted to assess the rarity of these circumstances but the frequency of both (1) and (2) both being true for a given alleged invention seems very very low, to put it charitably. Its even more rare than “inventor in garage struggled to solve problem that was plaguing industry for years” or “inventors made giant breakthrough by taking advantage of widely acknowledged phenomenon that nobody before had suggested was worth exploiting in myriad contexts.”

    1. 8.1

      I haven’t seen this before, but I don’t read the comments religiously. These are interesting thoughts.

      The first paragraph I don’t quite follow. Under 35 USC 103, obviousness is assessed “before the effective filing date of the claimed invention,” but that doesn’t mean “post-filing” evidence is “expressly precluded.” Post-filing evidence can be at least indirectly relevant to pre-filing obviousness. It’s not much different from the way people walking into a building with wet umbrellas can show that they were outside in the rain a few minutes earlier, or that a photograph of a heap of ashes next to a mailbox with your address on it may show that your house was on fire in the past. “Commercial success” is often overused and argued very badly, but I don’t think it’s outside the statute. Maybe I’m misunderstanding the argument.

      The “second” thought is also interesting, but I don’t have much to contribute in response. Offhand it seems like (1) and (2) probably *should* generally be patentable, but I can’t think of concrete examples of either. The closest thing I can think of to (2) is when a branded pharma company patents a compound, and then gets a bunch of follow-on patents to things like formulations or doses. Sometimes those are obvious and sometimes not, but it’s often difficult to assess under the conventional test because the patent on the original compound generally prevents anyone other than the patentee and licensees from exploring those things.

      1. 8.1.1

        “It’s not much different from the way people walking into a building with wet umbrellas can show that they were outside in the rain a few minutes earlier”

        Respectfully, the relationship between non-obviousness and commercial success is vastly different from the relationship between rain and a wet umbrella.


          Yes. The point is that evidence of the state of things at time X can come from after time X. Maybe analogies aren’t the best way to make the point, but it’s not complicated.


            Here’s the problem: “obviousness” as set forth in the statute has NOTHING to do with any subsequent “commercial success”. They are, as far as the statute is concerned, completely unrelated concepts. In fact, the statute is explicit about the relevant timing of the analysis. Beyond that, we know that “commercial success” of goods arises out of numerous factors unrelated to “innovation” (like marketing, trends, etc) and we know that the existence of the patent can aid in commercial success (so there is circularity/bootstrapping in any such consideration).

            Looking at it from another perspective, how would the patent blogosphere react if the PTO started rejecting claims as obvious “because the inventions are unlikely to be commercially successful”? That would actually be a reasonable thing for the PTO to do *IF* there was an actual (inherent, logical) relationship between the two concepts (which there isn’t).


              Your “logic” does not reach as patents are not a right to engage in any type of >must make scenario.

              As a supposed patent attorney, you are supposed to know that.


                “ patents are not a right to engage in any type of >must make scenario.”

                This is 100% consistent with the absence of any inherent relationship between non-obviousness and commercial success, as I set forth above.

                1. Except the opposite.

                  You want a contrapositive to be on equal footing with something that it is not – and in accord with the nature of the right, something it could never be.

                  It is plain error to attempt as you do.

                2. You also are displaying a fundamental misapprehension of what evidence is and does.

                  You are attempting to insert a time factor inappropriately – as you have ever done with anything “post filing.”

                  That’s just not how evidence works – nor how it is supposed to work.

                  The simplified analogy went right over your head as you wanted NOT to understand its simplicity. You really are trying hard to remain in ign0rance.


              I think the problem with “commercial success” precedent isn’t that it’s wrong, but that it encourages a lot more bad arguments than good arguments.

              The Federal Circuit says “[c]ommercial success is relevant because the law presumes an idea would successfully have been brought to market sooner, in response to market forces, had the idea been obvious to persons skilled in the art.” Dubious, but if a patented product is truly new and wildly successful, a factfinder tempted to find obviousness might fairly ask “if it’s obvious, why did no one make it before.” As you point out, there’s often an answer: trends, marketing, business skill, access to money or capital, maybe the inventor was just the first to see a profit opportunity. But sometimes, in some cases, the public response to a patented product may still be indirect evidence of nonobviousness.

              In a lot of cases, though, patentees just make bad arguments. “I sold a patented product, so give me an extra thumb on the scale.” “Commercial success negates obviousness.” “These 5-star reviews on Amazon outweigh your prior art.” The caselaw tries to cull the bad arguments with things like the nexus requirement, and caselaw recognizing the role of blocking patents, but this can probably be improved.

              To your hypothetical about the PTO rejecting claims, the main problem is that you have the examiner guessing at the future, as opposed to courts looking back at concrete evidence of commercial success. The second problem, is that a patent examiner’s predictive business judgment is probably the last thing the legal system wants to privilege.

              Commercial success has an indirect, attenuated, often badly-argued relationship to nonobviousness, but I’m not convinced it’s nonexistent.


                I would agree that use of the argument should be made robust to be effective.

                That does not change though Malcolm’s ham-fisted insistence on not understanding that an item later in time may legitimately serve as evidence of a condition earlier in time. He really tries hard to misunderstand that.

    2. 8.2

      But the novelty requirement sufficiently precludes commercial success for reasons other than inventiveness. If the claimed invention is successful then why wasn’t it proposed or offered by another earlier? Why wasn’t prior art minus the allegedly obvious improvements marketed earlier? Why can’t the allegedly infringer succeed in the market with the prior art sans the claimed improvements? If it’s obvious them it’s trivial and unnecessary. If it’s important to the challenger to invalidate (or deny) the claim, then it must be significant and that means patentable weight to the whatever the improvement is over the prior art which is free to be commercialized.

  2. 7

    “reasonable expectation of success”

    The question I always have when reading that phrase is: “success of what?” What is one skilled in the art being successful at? What is this “success”?

    It is trivial to combine together the vast majority of mechanical/electrical/computer components. If “success” is merely one skilled in the art having the capability of combining these elements, then almost nothing is patentable.

    Some of the language refers to the success refers to the “result.” However, that isn’t helpful either. What is this “result”?

    I’ve read comments that refer to predictable results. Again, the fields of mechanical/electrical/computer are called the predictable arts (as opposed to the unpredictable arts) because the principles that tie these types of components together are known (and hence predictable). Consequently, many of the results of tying this components together are also predictable.

    And while I’m thinking of it, the combination of known elements are very likely going to produce many results — a great many of them predictable (and perhaps some unpredictable). As such, what results need to be (un)predictable? All of them? The majority of them? Only a select few?

    1. 7.1

      Meet my Big Black Box of electrons, protons and neutrons.

      Combining them is known.
      Elements of those combinations are known.

      ALL is ‘predictable’ (leastwise at a First Rung of a Ladder).

    2. 7.2

      Good comment, WT. Fixing exactly this issue (success of what) is the core task in the obviousness enquiry peculiar to the EPO (EPO-PSA). Applicant’s drafting of the patent application is what will settle it once and for all, precisely and definitively. The old adage applies: be careful what you ask for.

      So, WT, you write that you “always” face the same question “success of what”. Is your “always” only at the USPTO or (in your personal experience) is your “always” everywhere else too?

      1. 7.2.1

        Applicant’s drafting of the patent application is what will settle it once and for all, precisely and definitively.
        No. This is from the EPO’s guidance on the PSA approach:
        link to epo.org

        The objective technical problem derived in this way may not be what the applicant presented as “the problem” in the application.
        Consequently, the problem used may not be the problem defined by applicant. Also, consider the following:

        The expression “technical problem” is interpreted broadly; it does not necessarily imply that the technical solution is an improvement to the prior art. Thus the problem could be simply to seek an alternative to a known device or process which provides the same or similar effects or is more cost-effective. A technical problem may be regarded as being solved only if it is credible that substantially all claimed embodiments exhibit the technical effects upon which the invention is based.

        Could be simply to seek an alternative to a known device? That sweeps up just about any improvement patent. I can just start sticking on (or swapping) random components on a known device and obtain an alternative to this known device. How is this different from having some undefined “success” or “result” for which a reasonable expectation of obtaining must be found?

        The “formulation of the objective technical problem” is a subjective task. For any invention, I could formulate one technical problem, Anon could formulate another technical problem, MM could formulate a third technical problem, Josh could formulate a fourth technical problem, Dennis could formulate fifth technical problem and so on and so forth. Depending upon one’s skill in formulating this technical problem, the solution to this technical problem can be easier or harder.

        When I was a kid, I discovered that doing mazes (with pencil and paper) was a lot easier when you started at the end instead of the beginning. The same applies to determining obvious. It is a lot easier when you start at the end (i.e., the invention) than when you start at the beginning (i.e., the prior art). That’s the problem with all of these approaches to determining obviousness is that they employ considerable amount of hindsight.

        Earlier US case law made a point of impressing upon judges/examiner the need to avoid relying upon hindsight. However, those past admonitions have been tempered by the Supreme Court. Consequently, obviousness tests are no long tests of whether some invention would have been obvious to one having ordinary skill in the art having nothing but the prior art before him or her. Rather, they are tests as to how crafty can a decision maker or advocate (e.g., judge/examiner/defense counsel) be in formulating some “success,” “result,” or “objective technical problem” that naturally leads one skilled in the art from the prior art to the claimed invention.


          WT: “ It is a lot easier when you start at the end (i.e., the invention) than when you start at the beginning (i.e., the prior art). That’s the problem with all of these approaches to determining obviousness is that they employ considerable amount of hindsight.”

          The “problem” you describe is not a “hindsight bias” problem. As Dennis was so kind to point out early on in this discussion, ANY inquiry into obviousness necessarily involves stepping backwards into time and evaluating the relationship of the claimed “invention” to the prior art. Again, this is not a “problem” with “these approaches”. It is simply the nature of the question that is being asked.

          When you complain about a party presenting a version of events that makes the invention seem obvious, or a judge explaining why he thinks an invention is obvious, you are just whining about the existence of any kind of screen for inventions that are not anticipated but which are also unworthy of patents. You’re entitled to whine about the existence of such a screen but recognize that it makes you look like a patent maximalist crank which is an already an identified trait of yours. How so? Because it’s the same sort of vapid whining that you and others bring to discussions about subject matter eligibility.


            When you complain about a party presenting a version of events that makes the invention seem obvious, or a judge explaining why he thinks an invention is obvious, you are just whining about the existence of any kind of screen for inventions that are not anticipated but which are also unworthy of patents.
            Why I bother responding, I don’t know, but here goes …

            The problem I have with YOUR analysis is that you don’t think anything in the predictable arts is patentable. You constantly decry the logic of the so-called ‘patent maximalists’ but I cannot recall you ever identifying an existing patent (again, in the predictable arts) and explicitly saying, in this forum, “yes, this should have been patented.”

            All you’ve got in your toolbox is “waah … I don’t like patents and anyone who likes patents is a grifter.” You’ve got thousands of posts on this blog and the vast, vast majority can be boiled down to those two points. You express no logic beyond “patents are bad and patent professionals are even worse.”

            If YOU want to sound articulate. If YOU want people to perceive you as the adult in the room. If YOU want to persuade people of your position. This is hardly the way.

            While I sympathize with much of your politics, you epitomize the right-wing caricature of an unthinking liberal whiner. You (along with your spiritual brother Anon) have a complete inability to recognize and respect people’s positions and engage in honest debate. You are both highly-intelligent but act like 5 year olds (who like to hear the sound of their own voice) most of the time. I cringe to think that you might act like this with colleagues and clients.

            I rarely bother addressing either you or Anon because it is a waste of time. You both write the same things YEAR AFTER YEAR AFTER YEAR AFTER YEAR. The insults are the same. The logic is unchanging. ChatGPT could easily replicate both of you because there is hardly anything original in what you write.

            Now that I’m done addressing the children, if any adults want to discuss the issues that I raised, please feel free to do so.


              WT: “I cannot recall you ever identifying an existing patent (again, in the predictable arts) and explicitly saying, in this forum, “yes, this should have been patented.””

              Oh geez not this nonsense again.

              Look, it SHOULD be difficult to obtain and enforce a 20 year monopoly on a valuable claim in the predictable arts for reasons that should be … obvious. I don’t keep track of how often that happens because to the extent it’s possible to keep track of that, it’s boring. What’s easier to keep track of are the instances where such patents are challenged and the court props the claims up for spurious or controversial reasons. This is how blogs work. Let’s say some district court finds that putting a bolt in position X in machine Y was non-obvious because an article in Machine Y Digest (the only publication concerning said machines) stated that such positioning would render the machine unusable. There was a dispute over the publication date and the infringer lost that dispute and, as a result, the entire case. Great! Do I care enough to write everybody here and let them know I approve? Nope. Does ANYBODY care other than the parties involved and other people in the Machine Y business? Probably not. In any event, it’s unlikely Dennis or Jason is going to write about it either.

              The bottom line is that there is no shortage of patents being granted or applied for or licensed unless perhaps you believe that there aren’t enough jobs for patent lawyers. What’s interesting to me over the years is watching people repeatedly make the same ridiculous arguments over and over and over as if nobody has ever made them or addressed them before. Or just complaining about some alleged lack of innovation that isn’t happening because the PTO isn’t handing out a bazillion patents and “nobody can afford it otherwise” and of course we don’t want “the government” to do anything because that would mean “the government” would get credit which might inspire a wave of socialism or something horrifying like that.


                Please Pardon Potential re(P)eat…

                Your comment is awaiting moderation.

                March 11, 2024 at 11:52 am

                Malcolm’s “What’s interesting to me over the years is watching people repeatedly make the same ridiculous arguments over and over and over as if nobody has ever made them or addressed them before.

                is a late release – but a fine example of his typical hypocrisy.


              Most likely this is due to your admitted lack of cognition in aligning with Malcolm’s political views.

              (and your own inability to recognize how correct I have been about things AI)

              Most all other patent topics we are in alignment.


                And I’ve got a reply to MadMax stuck in the filter as well — a reply that will never see the light of day. I’ve had dozens of similarly-situation comments over many, many months.

                Welcome to the world of the totally-random and completely-useless Patently-O filtering process.

                1. There are a few filters:

                  1) too many hyperlinks

                  2) George Carlin – an unregistered “naughty words” – this can happen for letters split across words, and even words that are accurate and not offensive, as they describe the offensive behavior of another.

                  3) post count – this is an inconsistent designation of allowed posts per user.

                  2) is the most difficult.


          Yes, of course the so-called “objective technical problem” (OTP) of the EPO-PSA is often, or even usually, significantly different from what the patent drafter reports as the technical problem addressed by the real-life named inventor. Obviousness should be determined objectively, relative to the notional PHOSITA, and not wrt the named individual real-life inventor and their particular limited knowledge of the prior art.

          You fall into error when you suppose that at the EPO one has a free hand to formulate the OTP as one pleases. In actual fact, the OTP is derived by something as precise as a mathematical equation. Call the prior art starting pont D1. Call DPAF the disclosure in the patent application as filed, of combinations of technical features, and (of decisive importance) what technical effects they deliver, exclusively. The equation is

          OTP = DPAF – D1

          and hence (what D1 discloses being outside your control) what you draft will fix with certainty i) what is D1 and ii) what is the OTP. Pinning the technical field, and tying effects to features, is the crux of it. If what you need for the formulation of the OTP you crave is not to be found in the reservoir of disclosure in the DPAF, you (whether owner or petitioner for revocation) are stymied. I get the feeling that you have no experience of arguing patentability at the EPO. Are you perhaps bothering me here in the hope of learning something?

          You state baldly that the formulation of the OTP under EPO-PSA is a “subjective task”. I disagree. Where did you go to, I wonder, to pull out that particular bald assertion?

          My preference is for a TSM approach to the obviousness enquiry, because it argues the case on the evidence of stuff published prior to the filing date. Much less arguable than what tech experts assert when pulling stuff out of their heads 20 years after that date. EPO-PSA is a species of TSM, OK?


            You state baldly that the formulation of the OTP under EPO-PSA is a “subjective task”. I disagree. Where did you go to, I wonder, to pull out that particular bald assertion?
            It is plain as day looking at the EPO’s own guidance on the matter.

            As I said, take X number of people looking at a disclosure using the EPO approach and from those X number of people you can easily obtain X different OTPs. That is subjective.

            Recall this language from the EPO’s own guidelines: “Thus the problem could be simply to seek an alternative to a known device or process which provides the same or similar effects or is more cost-effective.” The “same or similar effects or is more cost-effective,” for example, gives people great leeway in defining the OTP differently. The OTP being selected is, thus, subjective.

            Ultimately, nearly everything in your analysis is subjective. One person may define a technical field slightly differently than the next. People could disagree on what is the closest prior art and consequently, people could disagree on the differences.

            For example, it is pretty common that some examiners have very intimate knowledge with certain prior art. Perhaps they’ve used that prior art on multiple occasions. In such instances, it would be natural for them to identify that is the closest prior art (even if, for example, there exists some other prior art that is objectively closer but not as familiar to the examiner).

            Also, as stated in the guidelines:
            Sometimes, the objective technical problem must be regarded as an aggregation of a plurality of “partial problems”. This is the case where there is no technical effect achieved by all the distinguishing features taken in combination, but rather a plurality of partial problems is independently solved by different sets of distinguishing features.

            Consequently, a decision maker, should they be so inclined, may decide to analyze everything piecemeal and how that is done can certain be performed subjectively.

            You have long held a “Deutschland, Deutschland über alles” attitude as it pertains to the EPO. This is the reason that the first person I actively ignored is yourself (prior to Anon and MM). Your message of “the EPO is superior” is as boring today as it was 15 years ago.


            So MaxDrei – how is AI (and Gen AI) folded into that “relative to the notional PHOSITA”

            Can machines invent, or can they merely present that which is already known?


              Can’t answer your question, anon. Not knowledgeable enough about what GenAI is capable of.

              Personally, I remain to be convinced that a machine can think, yet the act of thinking is a prerequisite of conceiving a patentable invention, isn’t it?

              I personally like the Descartes invention: Dubio ergo cogito; cogito ergo sum.

              I doubt, which is the proof that I think.

              Does a GenAI have doubts about anything? I doubt it.


                Can’t answer your question, anon. Not knowledgeable enough about what GenAI is capable of.

                You NOT BEING KNOWLEDGEABLE has never stopped you before, MaxDrei.

                Rather, this (again) falls to your proclivity for not engaging on items that do not fall into your EPO Uber Alles shilling efforts.

                Let’s make this really simple (as I have done for you several times now):

                Clearly, the DABUS case provided (in an analogy to copyright of the Simian Selfie case) that an objective advance was extant that could not be properly reflected in the legal sense as an invention by a human person.

                Given that an objective advance can be ascertained, AND given that said objective advance can not be (in whole or in critically meaningful part – that is, co-inventorship IS implicated) be properly FULLY claimed by human inventors,

                WHAT does this do — in YOUR Sovereign — to that knowledge “relative to the notional PHOSITA

                Surely, you being the savant of anything EPO can advice us of this situation.

                If it helps, you may reference my ‘invention put into a black box in a first room, and then presented to a human in a second room” thought experiment.

                I await a meaningful answer from you. If that takes your consulting with some other EPO practitioners, that is permissible.

                1. The question, can I name an AI as inventor, is different from the question, can an AI ever invent something patentable.

                  I don’t know a jurisdiction that has yet answered that second question. They get round it by pointing out that the patent statute in their jurisdiction contemplates nothing else as inventor than a human.

                  I doubt that patent attorneys are competent to answer it. Perhaps we could get new insights from a lively debate between computer scientists, moderated by a patent attorney.

                2. Let’s try again.

                  Let’s focus on State of the Art.

                  How does the EPO “relative to the notional PHOSITA” treat that which is generated by an AI machine?

                  You have a BINARY question here.

                  Either the machine CAN invent or it cannot.

                  Let’s see that mind of yours put to work in each of the simple results, and use each in regards to your knowledge (be it as it may) OF the EPO.

                  Case 1: machines cannot invent.
                  Does this mean that ALL machine output must then be taken as nothing more than State of the Art (and thus, belong to that phrase that you use: “relative to the notional PHOSITA

                  Please answer first, “Yes” or “No.” Once your provide the definitive answer, you may supplement with reasoning , as you understand it.

                  Case 2: machine can invent.
                  In this case, simply treat the material — regardless of your views of “naming” as simply an objective invention has been made, AND a human person cannot properly be named as the FULL legal inventor.

                  Same “Yes” or “No” with optional reasoning.

                  I am not sure why you want to dodge this so vigorously.

                3. Wt and marty take note:

                  I am clearly trying to engage on the merits and WANT to recognize the views of another — on their own knowledge playground of the EPO.

                  And yet, it has been worse than pulling teeth.

                4. You say, let’s focus on the state of the art. OK, let’s do that.

                  The EPC defines the state of the art as everything made available to the public by written or oral description, by use, or in any other way. If somebody makes available to the public the output from an AI then, in the instant of that making available, that output becomes part of the state of the art, regardless how inventive or obvious that output is. Human inventors beware. There is no general grace period under the EPC.

                  I am not trying to dodge anything. Rather, I’m just trying to understand your 0bs3ss10n with the question whether or not (Yes or No) an AI can invent. The question is not interesting until society bestows legal personality on an AI. That’s not going to happen any time soon, is it?

                  And when that happens, then from that point on, an AI can be named as inventor.

                  I’m finished, with this discusion. Do not hold out any hope that I might reply to your next offering.

                5. You dodged again by insisting on a point I asked you not to (AI being named as an inventor).

                  The ‘0bsess10n’ was to see if you were capable of some critical thinking as to the nature of the non-human element of using AI in any co-inventor type of scenario in which humans could not — of themselves — properly claim to be inventor of all claimed aspects.

                  You have shown yourself to be incapable.

                  Perhaps someone that actually knows EPO law could answer the question.

    3. 7.3

      You ask a good question, WT, that every practitioner should think about when they evaluate the obviousness of a claim, in particular claims drawn to compositions of matter. A candy bar with dried pineapple, caramel, chocolate and ancho chili powder is obvious as such even it causes 85% of wild ostriches to achieve better outcomes after ingesting poisoned rats. There might be a method claim in there, though!


          “ You are, of course, quite wrong there Malcolm.”

          Because like all five year olds, Billy knows candy.

          LOL Seriously, when you dry up and blow away, please do it downwind.


            But are all amounts of the components able to result in the better outcome?

            Or only equal amounts of all four?

            Or only if one has 50% of dried pineapple, 25% of caramel, 15% of chocolate, and 10% of ancho chili powder?

            Or…the possibilities are legion.


              A very narrow claim directed to the particular non-obvious relative ratios which uniquely achieve a useful unexpected result changes everything. That’s not the issue I was addressing in my comment.

              Billy, of course, will yammer on about how “picture claims” are “worthless”, which is also utterly beside the point.


                Please Pardon Potential re(P)eat

                Your comment is awaiting moderation.

                February 24, 2024 at 7:38 pm

                Picture claims ARE worthless, and that is NOT besides the point.

                No “yammering” needed.

                1. +1

                  How can one not know a picture claim is worthless? Especially in a world where DOE is not likely, but file wrapper estoppel is?

  3. 6

    Unlike too many other cert petitions in patent cases shown on this blog, this seems like good straightforward cert petition “question presented” here, arguing Fed. Cir. defiance of specific Sup. Ct. authority: “Whether obviousness requires a showing of “predictable” results, as this Court held in KSR, or a mere “reasonable expectation of success,” as the Federal Circuit has held both before and after KSR?
    But, if this decision is really inconsistent with KSR, did they try getting en banc reconsideration on that basis before this cert attempt?

    1. 6.1

      Yes. It is an appendix to the petition per the petition.

      “Appendix C – Order denying rehearing …………….. 76a”

    1. 5.1

      Obviousness is always a hindsight operation — looking back to whether it would have been obvious. What we try to do is walk through the process without hindsight bias.

      1. 5.1.1

        Perhaps semantics, perhaps not – but “looking back” is not the same as applying hindsight.

        Applying hindsight involves both going back in time AND using the interim period.

      2. 5.1.2

        To me, the key distinction is looking forward from the references/info available at the time, versus looking backwards to piece together the references/info. What would make you combine them if you did not have the specification?

        This is when the consideration of the whole reference becomes important.

    2. 5.2

      Everything involving looking back at the past is influenced by hindsight. Regardless, the law requires that the proper questions are always couched in terms of what one skilled in the art, with access to the public record, would have thought at the time of the alleged invention and/or filing date. Determine and evaluating the answers to those questions requires an understanding of history that is obtained through research and interviews with people who were around at the time and paying attention to the subject matter and/or who are qualified experts on the subject matter and its history. Note that in nearly all cases it’s not ancient history we are talking about. Just a couple of decades at most. But as time marches on and patent terms expire, things can definitely get hazier. This was another great reason to put clearer and stricter limits on patent term. Query whether increases in information productivity should be reflected in shortened patent terms as a general trend …

      1. 5.2.1


        Your inability to actually BE objective colors your view that bias is not escapable.

        A pity that – real attorneys (or, to be more precise, real good attorneys) know how to be objective.

      2. 5.2.2

        Query whether increases in information productivity should be reflected in shortened patent terms as a general trend …

        How do you feel about copyright? Big Media?

      3. 5.2.3

        AND yet again, Malcolm disappears.

        (and I did not even have to ask him about his position on the Israel/Hamas fiasco)

      4. 5.2.4

        Come Malcolm – share (whatever) ‘wisdom’ you possess.

        We both know the level of that characteristic for you, eh?

  4. 4

    That would be a really bad idea to create a different criteria for “predictable arts”. That’s a misnomer and creates an artificial and non-realistic analysis. All science is essentially predictable. The only difference is how well the people working in a particular field understand it. This petition invites SCOTUS to expand the hindsight and uncertainty of KSR rather than reining it in.

    1. 4.1

      Josh – You are mistaken – at least in part.

      We still do have non-grown-up arts, as well as having the need for serendipity.

      (and yes, those non-grown-up arts are the ones that Malcolm practices in)

      The part that you are not mistaken in is the part about reining in uncertainty rather than expanding it – there, you are absolutely correct.

    2. 4.2

      The apparent revelations from the Webb Telescope regarding developed galaxies when there should not be developed galaxies are certainly 1) science and 2) arguably essentially not predictable.

      1. 4.2.2

        That’s the why the government immediately filed patents on methods of using telescopes to detect those particular galaxies.

        Just kidding.😂

      2. 4.2.3

        0H n0es – yet another post in which marty is feeling intimidated and is choosing to allow ‘anon’ to have the last word….

        But he will surely whine about HIS choice at some other date.

  5. 3

    “…I hope the Supreme Court will take up this case and push it forward — hopefully further developing obviousness doctrine…”

    By “developing” do you mean “confusing”? Because clarity in patent law is the last thing I expect from SCOTUS. Or have you forgotten the trio of 101 cases from the previous decade the court’s refusal to revisit the mess it’s created with them?

    1. 3.2

      AM – more than just a fair point – a condemnation of the Royal Nine.

      On point here as people NEED to recall history and the entire basis of retrenching AGAINST that same body of Royal Nine of the 1930s-1940s that had that body self-describe with the adage of, “The only valid patent is one that has not yet appeared before us.”

      Congress may well have NOT finished THEIR job with sculpting out the contours of the new 103 section, but it would be INSANE to think that they intended the body (the Supreme Court) to have THAT authority when they just stripped them of the “define Inventive Gist” authority that the Supremes never could settle on.

  6. 2

    This petition’s argument seems to clip one sentence from KSR and treat it as “the test” for obviousness. It highlights KSR’s statement that that a “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” and argues that KSR established a “predictable results” test. Ergo, Federal Circuit precedent is wrong because “reasonable expectation of success” sounds like a lower bar than “predictable results.”

    Perhaps I’m missing something about the argument, but this seems… very weak. “Obviousness” is more of a standard than a rule, and courts continue to struggle to find linguistic formulations that make sense and can be applied consistently in practice. “Reasonable expectation of success” has its flaws, but I don’t think KSR overruled it and replaced it with a “predictable results” test. I’d be surprised if the Supreme Court wants to wade into this, but the Supreme Court sometimes does surprising things.

    1. 2.1

      DCL makes a fair criticism here regarding the petition’s reliance on a singular sentence from KSR to argue for a “predictable results” test. For me, the key question here is whether something that is “obvious to try” remains obvious even though the actual outcome of the “trial” was unpredictable.

      1. 2.1.1

        In a vacuum without context, the term “unpredictable” is not very useful. There ARE “predictable” results in many circumstances which is why certain changes are “obvious to try” and which is the reason we shouldn’t grant patents on changes that, e.g., result in “between 0.5% and 1% improvement in chemical stability at high altitude at temperatures between 45 and 55 F.” This is where subject matter and claim scope can become very important and why “reasonable expectation” is a better term, in general, than “unpredictable.” Note that “would not have been predicted” or “surprising” or “better than expected” still get favored treatment under the “reasonable expectation” test.

      2. 2.1.2

        I don’t think you can answer that question without knowing how much effort, time and money is required to “try”. Cf. the KSR line about a “finite number of identified, predictable solutions”.


          Re: “I don’t think you can answer that question* without knowing how much effort, time and money is required to “try”. Cf. the KSR line about a “finite number of identified, predictable solutions”. ”
          Good point.
          *[Is it 103 “obvious to try” with, or without, “predictable results” or “reasonable expectation of success” ?



            How would you posit that it BE ‘obvious to try’ in the face of WITHOUT
            – ‘predictable results’ or
            – ‘reasonable expectation of success?’

            What type of hypo would (should) not be immediately dismissed?


              If there are 20 different minor variations on the same concept, and you think one of them has a RES, it may have been obvious to try each of them even if the odds of any one variation working were low. It depends on whether the trying is resource intensive.


                I would disagree that that is how the courts would view this.

                If the number be as small as 20, then cost or other resources would not play the factor that you would think it would play.

  7. 1

    “When we want to trash a patent and even we cannot justify with straight faces 101-ing it . . . BAM! No problem — we’ll just 103 it instead! Even if we have to make up our own standard to do it!”

    “Is crippling innovation fun, or what!”

    — Your friendly neighborhood CAFC

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