2143.02 Reasonable Expectation of Success Is Required
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This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time the invention was made," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102.
A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art.
I. OBVIOUSNESS REQUIRES A REASONABLE EXPECTATION OF SUCCESS
Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success.
II. AT LEAST SOME DEGREE OF PREDICTABILITY IS REQUIRED; APPLICANTS MAY PRESENT EVIDENCE SHOWING THERE WAS NO REASONABLE EXPECTATION OF SUCCESS
Obviousness does not require absolute predictability, however, at least some degree of predictability is required.
- Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness.
III. PREDICTABILITY IS DETERMINED AT THE TIME THE INVENTION WAS MADE
Whether an art is predictable or whether the proposed modification or combination of the prior art has a reasonable expectation of success is determined at the time the invention was made.
