After the KSR vs Teleflex case in April 2007, another case (ex Parte Kubin) involving the appeal of a patent claim rejection had its judgement reaffirmed in May 2007 based on the new "Obvious to Try" standard.
The patent involves a cDNA molecule (NAIL) that serves as an NK cell surface marker. In summary, the main claim is the isolation of the said molecule. Kubin appealed on the rejection based on a similar case in 1995 (Deuel) that its cDNA claims cannot be "made obvious by mere knowledge of a desired protein sequence and methods for generating the DNA that encodes that protein". However, unfortunately for Kubin and as a result of the KSR judgement, the claim was obvious to try.
Even though obvious to try may not necessarily mean the resulting outcome was obvious or the process straightforward, it was in this case. Straightforward does not mean it is easy, it could be tedious but so long as it is routine, those skilled in the art would be able to do it, which was a point noted. Also, because the claims were not sufficiently detailed, claiming only 80% identity of the described sequence, its rejection was further supported. Certainly, the "obvious to try" rule makes claims harder to be approved, and bad patents without much innovation could have more difficulty being used to sue for damages. However, due to hindsight bias, it can be very difficult to determine if something was indeed obvious to try.
Sources:
http://patentlyo.com/patent/2007/07/ex-parte-kubin.html
http://patentlyo.com/media/docs/2007/07/fd070819.pdf
http://www.patents4life.com/Ex%20Parte%20Kubin.pdf
http://www.hoffmanbaron.com/releases/HB%20Article%20Reprint_fnl.pdf
The patent involves a cDNA molecule (NAIL) that serves as an NK cell surface marker. In summary, the main claim is the isolation of the said molecule. Kubin appealed on the rejection based on a similar case in 1995 (Deuel) that its cDNA claims cannot be "made obvious by mere knowledge of a desired protein sequence and methods for generating the DNA that encodes that protein". However, unfortunately for Kubin and as a result of the KSR judgement, the claim was obvious to try.
Even though obvious to try may not necessarily mean the resulting outcome was obvious or the process straightforward, it was in this case. Straightforward does not mean it is easy, it could be tedious but so long as it is routine, those skilled in the art would be able to do it, which was a point noted. Also, because the claims were not sufficiently detailed, claiming only 80% identity of the described sequence, its rejection was further supported. Certainly, the "obvious to try" rule makes claims harder to be approved, and bad patents without much innovation could have more difficulty being used to sue for damages. However, due to hindsight bias, it can be very difficult to determine if something was indeed obvious to try.
Sources:
http://patentlyo.com/patent/2007/07/ex-parte-kubin.html
http://patentlyo.com/media/docs/2007/07/fd070819.pdf
http://www.patents4life.com/Ex%20Parte%20Kubin.pdf
http://www.hoffmanbaron.com/releases/HB%20Article%20Reprint_fnl.pdf
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