The summer 2008 issue of the Lewis & Clark (Vol 12, No. 2) Law Review is dedicated to the matter of nonobviousness in patent law- Business Law Forum: Nonobviousness — The Shape of Things to Come.
The papers are scholarly articles and are very densely written (sorta like some posts in this blog!!). But if you can tolerate that style or are an insomniac, some of the work seems to be worth plowing through.
Nonobviousness is one of the most vexing aspects of patent law. I find that my natural inclinations about what constitutes obviousness are completely inapplicable to patents. Perhaps one day I’ll get it.
Lamentations on Chemistry 
Not too hard …
1. Know someone of ordinary skill in the art.
2. Know that obviousness, unlike novelty can be argued by showing data revealing exceptional results.
3. Know that KSR lowers the bar for examiners proclaiming “There was a TSM = teaching, suggestion or motivation” within the knowledge of someone of ordinary skill in the art RATHER than THE PRIOR ART! I don’t see this as being as big a change as many think.
4. Know that the yearly attrition rate for examiners is 50, yes I said it, 50%! Which means you are communicating with a person with less than 2 years worth of experience in patent prosecution. Comforting no?
5. know that according to many the USPTO admin are bastards.Run by political appointees with little real-world experience.
6. Know that if #4 screws you by incompetence it will only take 1.5 years to appeal.
+ it helps to set up a Scalia punching doll and burn incense when you think about these things.
# 4 is the most shocking. It’s like handing the keys of the space shuttle to a 16 yr old!!
Considering all the aruging that goes on regarding the “usefulness” and “novelty” requirements, the fact that “obviousness” is a point of discussion is not surprising in the least.
Face it, lawyers will always find something to argue about. Or as a coworker here says: “Engineers to to school to learn how to work together. Lawyers go to school to learn how to disagree with each other.”
Even if TSM still stood, there would be arguments. Recall the famous lawyer a few years back wondering about “what the definition of ‘is’ is.”
Warning- I’ve beat on this dead horse before.
The matter of obviousness is timely because of the high rate of allowed patents. Chemists are trained to apply basic principles concerning the use of reagents and ideas relating to nucleophilicity and electrophilicity and apply them to new substrates. It is difficult for a chemist (like me, anyway) not to look at a claimed process and exclaim “Well, duh, of course that works! It’s just another application of hydride addition to a carbonyl or oxidative addition to Pd or migratory insertion.”
The generic nature of chemical transformations is accepted when it comes to Markush Claims. In this case, when the matter of known transformations of new substrates are considered, the PTO hands out claims like dollar-off coupons at DQ. With Markush claims, knowledge of generic utility does not constitute obviouseness, so a whole multidimensional space of claimed compositions is allowed.
How is fairness served when an assignee is allowed a claim on 500 permutations when they just want to hide the one of interest? And this is doubly true when the inventor is a professor who invented the art with federally financed grants in a facility completely or partially financed by the taxpayer.
Patents and Patent Lawyers can be frustrating to deal with but generally comes down to results, actual or prophetic. While, as is pointed out, it may “obvious to try” new things (reactions, solvents, structures) it’s the results, especially unexpected or unique, that matter. In pharma, most chemists can take a core structure and then build analogs, but having ones that hits the target proves to often be non-obvious, even retrospectively.
John- I like the quote, can you provide more direct attribution so I can use sometime.
CMC guy- I agree with you in relation to use claims. But with composition of matter claims, I think that too much real estate is handed out by the PTO just because someone had the huevos to ask for it.