The Background Problem with Inventive Step

In "Post-KSR Treatment of 'Problems' in the Background of the Invention," Professor Wegner explains his view on why "the creation of a 'problem' that is placed in the Background of the Invention may very well doom the invention to a conclusion of obviousness." According to the Good Professor, "What creates a special and immediate challenge for patent application draftsmanship is the KSR linkage between a 'problem' that is be solved by the patentee and the common sense of a worker skilled in the art who is motivated by the problem to seek out an 'obvious to try' solution."

As noted by the U.S. Supreme Court in KSR v. Teleflex:

“[w]hen there is a design need or market pressure to solve a problem and there
are a finite number of identified, predictable solutions, a person of ordinary
skill has good reason to pursue the known options within his or her technical
grasp. If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that instance the fact
that a combination was obvious to try might show that it was obvious under §
103.”

Thus, Wegner appears to be arguing that identification of a design need or market pressure "problem" in the specification suggests that there are a finite number of identified, predictable solutions that one would have good reason to pursue with anticipated success, thus potentially obviating of the resulting invention.

Regardless of whether his domestic thesis turns out to be correct, the worldwide situation on inventive step appears to be a bit more complex. For example, Europe still seems to use a "problem-and-solution approach" toward toward inventive step, while, in Japan, "if advantageous effects of the claimed invention over a cited invention can be clearly found in the description in the specification, etc., it is taken into consideration as facts to support to affirmatively infer the involvement of an inventive step."

Perhaps this will be one more area for international harmonization.