2.5.3.3.3 Several Solutions to the Problem

The prior art (in the light of common general knowledge) may suggest to the person skilled in the art a number of possible solutions to the problem. In this event:

"The pursuit of one of a number - perhaps many - obvious lines of research may produce a signal or particularly valuable discovery. In deciding on patentability it would seem to us regrettable, and not in accord with a primary purpose of patent law, to have to rule this out automatically in the name of obviousness."

Beecham Groups Limited's (New Zealand/Amoxycillin) Appln [1982] FSR 181 at page 192.

and:

"There were alternatives which might be tried only to be discarded, but the fact that there were a number of alternatives, cannot, I think, elevate into the head of invention the step taken by Lucas."

Lucas and Another v Gaedor Ltd and Others [1978] RPC 297 at pages 376 and 377

Where a claimed solution:

• is one of several options that the person skilled in the art would consider in solving either the identified problem or any subsequent practical difficulty;

• the options would at once suggest themselves to the person skilled in the art, e.g. the options are part of the common general knowledge, or clearly indicated in the prior art;

• there is no practical difficulty in implementing the particular solution claimed; and

• neither the prior art, nor the common general knowledge, teaches away from the particular solution;

then an inventive step objection will apply.

In this situation, the claimed solution is said to be ob via, or "lying in the way":

"As the latin derivation (obvius, in the way) makes plain something is obvious if it is lying in the way, so that one who takes the ordinary route will be likely to come upon it."

Elconnex Pty Ltd v Gerard Industries Pty Ltd 105 ALR 247 at page 262

In Philips (Bosgra's) Application [1974] RPC 241 at page 251, the court considered the same issue:

"Nothing ... would be more undesirable than that persons should be stopped ... from using materials which it is also established would lie readily to their hand, and would come to their mind as being likely materials to use. ... I think these (emulsifying) agents were obvious in this sense, indeed in the true sense of the word, that they were lying in the road, that they were there for the research worker to use, and it is quite wrong that he should be stopped from using them."

and noted that the road itself must be one that the research worker would naturally choose to take.