Innovators and the practitioners who counsel them are well aware that among the biggest hurdles to overcome in obtaining strong patent protection is convincing a patent examiner that a claimed invention is non-obvious in light of the prior art.1 By statutory requirement, a patent cannot issue if it is not useful, novel and non-obvious.2 Among these three requirements, issues pertaining to non-obviousness can be among the most challenging. They involve the most subjectivity. Recently, in Innovention Toys v. MGA Entertainment,3 which addressed the issue of when prior art is sufficiently relevant to a claimed invention to be considered in a non-obviousness inquiry, the U.S. Court of Appeals for the Federal Circuit reminded the community of inventors and patent professionals that both it and the Supreme Court have a broad view as to what art would be obvious for an inventor to consider when tackling an unsolved problem.

At the root of all obviousness inquiries is the question of how different and unpredictable must an invention be from what was known at the time of invention. Four years ago, in KSR v. TeleFlex,4 the Supreme Court weighed in on the then-current standards for determining whether a claimed invention was obvious and held that the Federal Circuit had previously been setting the bar too low when it rigidly relied on a standard that provided that a claimed invention was obvious unless there was evidence of a motivation or suggestion to combine prior art teachings.

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