The Limited Impact of In re Kubin and Its Treatment of Obvious to Try
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Just the Facts Ma'am:
The Limited Impact of In re Kubin and Its Treatment of Obvious to Try

By Daniel M. Attaway and Peter M. Jay 1


It was almost as if Judge Rader, joined by Judges Friedman and Linn, was channeling Joe Friday as he wrote the Federal Circuit’s recent decision in In re Kubin.2  As Joe Friday of Dragnet fame would say, “all we want are the facts, ma’am.”  And the facts are what define the outcome and impact of Kubin, where the court provided signposts to help guide both practitioners and applicants through the forest that is the fact-bound post-KSR obviousness.

In Kubin, the Federal Circuit declared that it could not, in light of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc.,3 “cling to formalistic rules . . . [and] customize its legal tests for specific scientific fields.”4  The Court, however, stopped well short of declaring that simply because a particular invention is obvious to try, it must also be obvious for purposes of patentability.  According to Kubin,  “the fact that a combination was obvious to try might show that it was obvious under §103.”5  This does not mean that it is obvious in all situa...

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