A large part of innovation relies on manipulating variables of known compounds, formulations, devices, systems and processes. Changes in some of these variables lead to inventions that are both novel and non-obvious and thus patent-eligible. Changes in others of these variables merely lead to obvious new technologies because the results could have been predicted by a person of ordinary skill in the art. Consequently, those inventions are deemed obvious and not patent-worthy.1 This latter scenario falls under what the courts and the U.S. Patent and Trademark Office (USPTO) call the doctrine of routine optimization, and many a patent applicant has had his or her patent claims rejected under it. However, the doctrine has an exception that comes into play when the variable is not at the time of invention known or expected to bring about a particular result and thus is not deemed a result-effective variable.
Despite the prevalence of rejections issued by the USPTO under the doctrine of routine optimization and the many ex parte patent prosecution cases in which applicants have tried to argue that a variable is not a result-effective variable, the U.S. Court of Appeals for the Federal Circuit (CAFC) has rarely been called upon to define the parameters of this exception to the doctrine. In In re Applied Materials,2 which was recently decided, the CAFC provided a rare glimpse into its perspective on when to apply the exception.
