THOSITA: Obvious to a Team Having Ordinary Skill in the Art

By Dennis Crouch

Inventors Per Patent: The number of inventors per patent has risen fairly steadily for the past 40 years. Today, most patents are directed toward inventions created by teams of two or more inventors working in a collaborative environment. When done well, teamwork can add tremendous value to the creative process and can also provide a combined depth of knowledge beyond most individuals.

Individual PHOSITA: From its inception, the 1952 Patent Act allowed for joint inventors. However, the question of obviousness focuses on a single hypothetical individual: "a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103. The AIA slightly amends this portion of Section 103 to clarify that the "said subject matter" is "the claimed invention." This is a change made throughout the statute and puts-to-rest ongoing arguments for identification of a "core" invention for each patent.

PHOSITA as a Team: In its most recent decision, the UK Royal Court of Justice appellate panel took a different path – finding that question of obviousness should be judged from the viewpoint of a "skilled team." MedImmune v. Novartis, [2012] EWCA Civ 1234 (Kitchen, LJ). For the case in question, the court found that the "patent is addressed to a team of scientists with differing backgrounds in areas such as immunology, in particular antibody structural biology, molecular biology and protein chemistry, but with a common interest in antibody engineering."

The skilled team construct is not entirely new to UK case law. See, for example, Schlumberger Holdings Ltd v Electromagnetic Geoservices AS, [2010] EWCA Civ 819 (Jacob LJ), and Halliburton Energy Services, Inc. v. Smith International (North Sea) Limited, [2006] EWCA Civ 1715 (Jacob LJ). The starting point for these UK courts is essentially identical to that of US courts. In particular, the UK Patents Act 1977 defines "inventive step" as being "not obvious to a person skilled in the art." The corresponding language is found in Article 56 of the European Patent Convention (defining inventive step with reference to being obvious to a person skilled in the art). In building the notional teams, the UK courts have been somewhat careful to avoid hindsight bias in the process. Dyson Appliances Ltd v Hoover Ltd [2001] EWCA Civ 1440. Despite the progress, it is clear to me that the UK courts are still working out what it means to be obvious to a team as opposed to obvious to an individual person.

What is added by a Team Analysis?: In 2011, I questioned whether obviousness analysis should reflect some nuances of teamwork:

As compared to a solo worker, teams often have an overall broader depth of knowledge, but are often plagued by communication difficulties. In the obviousness analysis, this shift could be reflected in a broader scope of potential prior art but a more rigorous analysis of whether the ordinary team would make leaps of analysis necessary to combine disparate prior art.

Despite providing arguments on both-sides, I suspect that a notional team would tend to make an obviousness conclusion more likely. The knowledge of those of skill in the art is considered in other areas of patent law such as claim construction, enablement, and definiteness.

THOSITA under US Law: One statutory question moving forward is whether a section 103 "person" can be interpreted to encompass a team of persons. The answer is almost certainly yes. Perhaps the greatest driving factor for this conclusion is found in Section 102 that begins with the statement that "A person shall be entitled to a patent unless…" For that statute, the term person certainly apply to teams of joint inventors.

One major problem with my starting point of increased-team-size is the reality that the obviousness question is not designed around a "skilled inventor" threshold but that of a skilled craftsman of "ordinary skill." This means that there is not really any statutory hook for pushing the obviousness analysis to track the culture of innovation and creative experimentation. Rather, the focus is merely on ordinary craftsmen and what would have been common sense at the time. By design, this creates a low inventiveness threshold intentionally does not consider the particular inventive path taken. "Patentability shall not be negated by the manner in which the invention was made." 35 U.C.C. 103 (post-AIA).

See:

  • Dennis Crouch, Person(s) Skilled in the Art: Should the Now Established Model of Team-Based Inventing Impact the Obviousness Analysis?, Patently-O (2011)
  • Jonathan J. Darrow, The Neglected Dimension of Patent Law's PHOSITA Standard, 23 Harvard JOLT 227 (2009)

68 thoughts on “THOSITA: Obvious to a Team Having Ordinary Skill in the Art

  1. JS,

    So you intend to have collateral issues with this David Stein? sigh – another internet tough guy.

    I do not think that David has anything to fear from your implicit threat, as his name is hyperlinked, and information there leads to the Cooper Legal Group, which matches up with the USPTO query to give the answer to your question.

  2. The UK courts have considered teams of skilled people for more time than I can remember, and it can be a subject of heated debate who is or who is not a member of the team.

    However, the innovative and classic judgment is that of Robin Jacob in Halliburton v Smith. I am glad to see that there is a link to that judgment and it is worth a read even if you practice mainly in the US.

  3. “Experts from around the world in diverse fields, I’ve brought you all together to come up with all the non-obvious inventions soon to be filed! Let’s get to work, team!!!”

    Can we work the phrase “by your powers combined” in there somewhere?

  4. If I were the UK court, I’d simply resolve the issue by noting that the “person skilled in the art” under Art 83 has the benefit of the teaching in the specification and is assumed to be capable, if necessary, of hiring people of ordinary skill to carry out the methods of manufacture therein. That capability can not be assumed to exist for obviousness purposes, of course, because of the hindsight issue — “Experts from around the world in diverse fields, I’ve brought you all together to come up with all the non-obvious inventions soon to be filed! Let’s get to work, team!!!”

  5. “What do “pulbably recyclable” and “shreddably recyclable” mean?”

    Specification brosensky. Use it.

    “And if the components are reinforced by polymers, as recited in the dependent claims, are they still “pulpably recyclable”?”

    If you read the article you’d know that his IRL embodiment had polymer reinforcement and were supposed to be pulpably recyclable.

  6. So why the furore I detected, when the UK court said as much?

    The US patent statute re enablement refers to “those of skill in the art”, a term which does not appear in the corresponding 103 statute (which refers to “a person”), and which is consistent with the understanding I expressed in my comment.

    Do the UK laws for obviousness and enablement refer to the same person (i.e., do both rules use the same language to refer to a hypothetical person(s))?

  7. Sounds like another whole new front for litigators to argue about and spend another half million dollars a side.

    And, more fundamentally, how can something be obvious to a collective mind? Not being a Vulcan, I have never had a mindmeld with anther so we can think as one. Heck, even my spouse and I don’t think as one.

    This whole “obvious to a Thosita” notion is so artificial that it has no bounds.

  8. (the specific composition and skills of the individual or team are of course subject to arguments and determined by the judge).

    James, is this not one of the factual predicates per Deere and thus NOT determined by the judge (resolving the level of ordinary skill)?

  9. Not so significant as that American Cowboy, at least as implemented in other jurisdictions to date. Rather, you consider what a ‘typical’ researcher would look like in the given field of the invention. If the field is a new drug designed to reduce arthritis developed using computational biology techniques based on protein modelling, you consider whether this form of research would typically be undertaken by a single researcher or a team. Here a team might be the applicable standard, including perhaps a PhD with drug design experience, a PhD with a bioinformatics background and a medical doctor with experience treating arthritis (the specific composition and skills of the individual or team are of course subject to arguments and determined by the judge).

    If you were to ask whether any one of those individually coul come up with any new drug capable of reducing arthritis through a computational biology approach the answer would probably be no, but collectively, as a team, some new drugs might have been obvious to them, and others might not have been.

    Conversely, in a field where the standard is for a lone inventor with a B.Sc. who makes the insight that you can combine knowledge from another field to create something new you don’t ask what 5 people from 3 different fields would collectively have been able to come up with.

  10. How indeed. My thoughts entirely, MM. So why the furore I detected, when the UK court said as much? I guess I’m missing something. Is Paul Cole around? He would be able to enlighten us all.

  11. Truth be told, Max, I was concerned when I read your comment and, being in a jocular mood, I posted my comment and continued reading the thread. Upon further reflection, however, I say this: OF COURSE the “team” for enablement purposes is different than the ordinary artisan for obviousness purposes. The “team” for enablement purposes includes the entire world WITH THE SPEC IN HAND whereas the “team” for obviousness purposes includes a person (or persons) who has read everything BUT the specification. In other words, I can claim “a new rocket ship with a genetically engineered horse pilot and a new carrot carving device”, it’s certainly not the case that the “ordinary artisan” for obviousness purposes is a person who is a sous chef equestrian who has a Ph.D. in genetics and rocket science. It *is* certainly the case, however, that enablement is satisfied if the specification provides sufficient teaching to enable a team of people with individual expertise in those areas, as of the filing date, to make and use the invention.

    How could it be otherwise?

  12. Ah – I understand your point, anon.

    I definitely care about the DoE, and if it were up to me, every foreign case would be filed with a new set of claims, drafted for maximum effect in that jurisdiction. However, there are many realities preventing that strategy, and we often trade DoE scope for cost-effective and expedited prosecution.

  13. A THOSITA standard would seem to VERY substantially raise the bar for what is patentable. Who is on the team to which the invention would have been obvious? Who picks the members of the team? Doesn’t it require hindsight to determine who the appropriate team members were — hindsight guided by the inventor’s contribution?

    Crowdsourcing is now very popular; is the aggregate expertise of the crowd the standard for THOSITA?

  14. Actually Tim, it appears that you are operating under several misconceptions. The patent system should not be compared to the Nobel prize system – they are for different things. The value of a patent cannot be known beforehand, and the Office is not in a position to grant patents (nor is it meant to be) based on relative “value.” As has been noted before, the notion of “value” falls to the fallacy that patents are only for “improvements.” Such may be an understandable mistake, but it is a regrettable one becuase it is so often made and so easily twisted.

  15. “why make patents more difficult”: I believe that it is a misconception that low inventive step requirements, making it easy to get a patent, will add to the stimulus to invent. The reverse is probably the case. It is the VALUE of the patent which is provides the stimulus. Most IT patents are, to be blunt, a dime a dozen while pharma patents are often exceptionally valuable. Would giving out 500 Nobel prizes each year increase their presently not insignificant incentive to do exceptional original scientific research? Definitely not,even though the chance of receiving a Nobel prize is today infintessimal.

  16. In a couple of ways, this analysis is already built into current US practice. Relying on prior art that lists multiple inventors inherently considers the factual products of teamwork. Additionally, when examiners consult each other, as in the “Second pair of eyes” review that takes place when an appeal is filed for example, it is essentially a team of persons asking themselves what would have been obvious.
    I say these things are built in because the conclusions of these teams also inherently includes the problems identified in teams, e.g. lack of communication. These sort of considerations are interesting to point out in academic papers, but to deliberately consider problems in communication seems like it would give rise to inconsistent, and arbitrary conclusions. As has been said before, we already have the analogous art issue that is really pretty much whatever you want it to be already.

  17. Sad MM? And if I now say that it happens only very rarely, when the claimed subject matter is the solution to a technical problem in technical field W and the team’s patentable insight is that, starting from D1 you should incorporate feature D2, alien to field W but common enough in unrelated field A?

    For obviousness we need a team typical of the ones that routinely explore field W.

    For enablement, however, it is unfair to the Applicant if you don’t add to the team one who knows about D2.

    How else can you strike a fair balance between the interests of the Applicant and of the public?

  18. There is definitely some clashes between the UK approach and that taken by the EPO (despite UK’s jurisprudence insisting it is full compliance with EPC rules).

    Canada has of course a long history of following/considering UK decisions, so it is not surprising that the Court and parties look only towards the UK courts, as opposed to the EPO decisions. Fortunately the Canadian Intellectual Property Office does tend to pay attention to EPO decisions (if not as much attention to EPO caselaw).

    With regard to your second point you are correct, the old patent act did not contain a test for obviousness. Furthermore Canada still relies on the common law for obviousness with respect to ‘old act’ patents that might still be in force (as they were valid for 17 years from issuance there are a few still kicking around). This was actually the case for the Apotex decision which addressed an old act patent. However the same test seems to be applicable for both new and old act cases. I would submit that the lack of a statutory basis for obviousness makes policy implications of the obviousness test all the more relevant.

  19. Sorry Dave I was not clear: your quickness to amend means you surrender your right to apply the doctrine of equivalents for your own claims against would-be infringers.

  20. I think the claimed invention itself defines its "fields."   We then look to the art in those "field" as the relevant art.  

    I don't really believe this is all that revolutionary.  We are bogged down only because we think if the claimed invention as having only a single inventor.  That is nonsense.  But even if there was only one inventor, if the claimed invention itself has subject matter in it from a different field than the field of the actual inventor, that would be a relevant field in my view.

  21. Wait til the examinertard who picks up his application dismisses it with “obvious choice of material” and cite to In re Leshin.

    You can see for yourself. A final rejection was issued for 12/631,831 back in May, and the applicant seems to have given up. I did not detect any reference to Re Leshin, or to any other decision.

    The claims are rather problematic, as they recite expressions such as “one pulpably recyclable wheel” or “shreddably recyclable hub arrangement coupled to said frame”. What do “pulbably recyclable” and “shreddably recyclable” mean? Does these expressions cover aluminium hubs? (I can show you a picture of a torn hub!) Bamboo wheels? And if the components are reinforced by polymers, as recited in the dependent claims, are they still “pulpably recyclable”?

    You can also have a look at the PCT SR and IPRP at the EPO register, prepared by US/ISA.

  22. > Be aware that this is not the standard applied at the EPO, so you may run into problems if you instruct your overseas partner to argue like you would in US prosecution.

    Quite true. Typically, my clients either amend their claims before filing in the EPO, or file the original claims with an expectation of a rejection and a subsequent claim amendment to add missing detail.

    I’m completely fine with that practice, because that is the law. And I would be happy to comply that law if passed in the U.S. as a revision of 35 USC.

    I have strong beef with examiners applying that standard within the U.S., because *it is not the law here.* I have encountered many examiners who flagrantly ignore the requirement of interpreting the claims “in view of the specification.” And typically, their SPEs don’t care, so the applicant’s only recourse is to the BPAI/PTAB or the federal courts. Examiners know that this is unappealing, which is how they usually get away with it.

  23. The actual legal standard is: “Give the claims the broadest reasonable interpretation when read in light of the specification.”

    Be aware that this is not the standard applied at the EPO, so you may run into problems if you instruct your overseas partner to argue like you would in US prosecution.

    The following is directly copied from the Guidelines:

    4.2 Interpretation

    Each claim should be read giving the words the meaning and scope which they normally have in the relevant art, unless in particular cases the description gives the words a special meaning, by explicit definition or otherwise. Moreover, if such a special meaning applies, the examiner should, so far as possible, require the claim to be amended whereby the meaning is clear from the wording of the claim alone. This is important because it is only the claims of the European patent, not the description, which will be published in all the official languages of the EPO. The claim should also be read with an attempt to make technical sense out of it. Such a reading may involve a departure from the strict literal meaning of the wording of the claims. Art. 69 and its Protocol do not provide a basis for excluding what is literally covered by the terms of the claims (see T 223/05).

    The claims must stand on their own without reference to the description (which might be in another language) or the figures, or to even another document.

    Mind you, EPO Search Examiners are required to look at the description when attempting to make sense out of the claims. You will therefore sometimes hear examiners saying things like “I searched the wording of the claim”, or “these claims are terrible, so I searched the description”. The boards normally assume that this is how applications are searched.

  24. “Doctrine of Equivalents” does not simply mean “close enough.” Not by a long shot.

    This area is evolving with case law, but the most concise description is that element (x) in claim A is not present in embodiment B – but element (y) in embodiment B “performs substantially the same function, in substantially the same way, to achieve substantially the same result.” (Graver Tank, Inc. v. Linde Air Products Co.) The purpose here is to prevent a competitor from making a change to a claim element that takes it just outside the literal scope of the claim, but that doesn’t substantively alter the invention.

    Contrast that with the situation where an inventor says: “Making this subtle change to this technique leads to a meaningful and unexpected advantage.” That’s a vastly different situation than any DoE application.

  25. Too late – KSR already did that (the whole not an automaton, also having common inventive capabilities – you know, the bit about the constantly resetting level necessary for something to have that “inventive gist” – never mind that that subjective inventive gist was put to bed by Congress for a more objective “obviousness” requirement that the Supreme Court simply treated as a nose of wax at their first opportunity to ignore the second sentence of 103.

    Fingers in the pie. Too yummy to not put them in.

  26. > I find it interesting that PHOSITA is assumed to have (and apply) an extra-extra-ordinary knowledge of the prior art. Even knowing when a single copy exists and is sitting in a publicly accessible cataloged library anywhere in the world, in any of 100-1000’s of different languages.

    I agree – but I think that “PHOSITA” was a poor choice of language for the concept that the drafters of 35 USC 103. (No one will ever accuse 35 USC of being too well-drafted, right?)

    As currently interpreted, obviousness *does not* mean: “The information known to a person of ordinary skill in the art.” Rather, it means: “The information known by a person having ordinary skill in the art when handed the cited references that qualify as prior art.” That seems like an OK definition to me; I just wish that we were more honest about it.

  27. Dennis, did you have a look at the EPO Case law on this question, as summarized in the white book? Sections 7.1.1, 7.1.2 and 7.1.3 are relevant.

  28. Yes, he knows everything, but he has no imagination whatsoever! The EPO training material I remember had a slide showing a PHOSITA who looked something like your brother in law, in Bermuda shorts and Hawaiian shirt holding a cocktail in his hand. Big mouth, but needs to be led in documented steps towards the solution.

    Sometimes I want to meet this guy in real life, and smack some brains into him.

  29. > Isn’t that the way the system is supposed to work? (As long as the difference is found in the original disclosure, and the rejection is justified).

    The actual legal standard is: “Give the claims the broadest reasonable interpretation when read in light of the specification.”

    Examiners’ standard in practice is: “Give the claims the broadest marginally plausible interpretation when read in isolation.

    This leads to some irritating differences:

    (1) If you define a term in the specification – even make up a completely arbitrary term – and then use that term in a claim, the examiner will feel free to give that term any conceivable definition, or even make one up to fit it. When you reference the definition of the term and examples in the specification, the examiner will say, “Put it in the claim.”

    (2) For inventions that involve subtle variations of techniques – e.g., subtle changes to known techniques that present novel and non-obvious (e.g., not expected) advantages – simply specifying that subtle change in the claim will result in a rejection, every time. The examiner will simply ignore it, dismiss it as trivial, reject it by “extending” a reference with generic “PHOSITA knowledge,” etc.

    When you point out the specific phrase, the examiner will simply say that it’s “not different enough,” and that the references are “close enough.” And when you reference the parts of the specification describing its value, the examiner will reply: “Put it in the claim.”

    I’ve got several cases stuck in prosecution or up for appeal that fit this description. They go something like this:

    Step 1: When you read the claims, you say to yourself, “what’s new about this?”

    Step 2: When you read the specification, you say, “Oh, THAT’S what this is about.”

    Step 3: When you read the claims AFTER reading the specification, you say, “Oh, THAT PART RIGHT THERE is what’s different. Yeah, that’s really clear.”

    Regrettably, the examiners refuse to go past step 1 (even though they are legally obligated to do so). They stop at the end of step 1, and then say, “Put something else into the claim.”

  30. Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61? Appalling stuff, in my opinion. I found it curious that the SCC and parties looked up to the London court and the EPC, without giving any attention to the decision of the EPO, whose board confirmed the decision to allow only claims to the specific active compound, based on the same prior art. (cf. wrapper and decision)

    As to the statutory basis for considering “teams” as a “skilled person”, I believe to have read once that the old patent act did not contain a provision for obviousness like S. 28.3, yet patents were nevertheless rejected for obviousness.

  31. I find it interesting that PHOSITA is assumed to have (and apply) an extra-extra-ordinary knowledge of the prior art. Even knowing when a single copy exists and is sitting in a publicly accessible cataloged library anywhere in the world, in any of 100-1000’s of different languages.

  32. Admittedly, I am skeptical about the effectiveness of presenting affidavits to an examiner.

    So am I. I was once an examiner, and to me this method smacked of proof by authority. We’re not there to assess the credentials of the person signing the letter but to examine the facts surrounding the case. A case of mine where an US applicant had filed an “affidavit” landed at the EPO BoA, which essentially paid no attention to the document.

    I had fantasies of coming back something like: “Dear Authority: I googled your name to see who you are. It indeed occurs to us that the invention as claimed couldn’t have occurred to a person of your educational and professional background in view of documents D3, D5 and D7.”

    Every time – and I mean, every time – I have contested the examiner’s conclusion, I get two responses:

    (1) […]
    (2) Rather than describing the difference, put it in the claim.

    I have found that taking option (2) is the fastest way to overcoming the references and getting an allowance.

    Isn’t that the way the system is supposed to work? (As long as the difference is found in the original disclosure, and the rejection is justified).

  33. Can someone elaborate on the tension between KSR and Klein? Did KSR say that the two-prong test for analogous art is out? Klein applied this test, and at least by the time the case reached the CAFC there was no disagreement that the cited art was not in the field of the applicant’s invention – the case turned on whether the art was reasonably pertinent. Did KSR provide guidance on how to determine reasonable pertinence?

  34. > Legally, in my humble opinion, a person of ordinary skill the art is deemed to know the entire contents of the prior art in the related field. The search for the person of ordinary skill in the art really is a search for the relevant art that it took to make the invention.

    I don’t think that’s at issue, Ned. I think that the legal standard for identifying what PHOSITA would *know* is exactly as you’ve described it – everything qualifying as prior art in the field is within PHOSITA’s knowledge.

    This “THOSITA” issue is about a 103 rejection based on art from multiple fields. The UK decision seems to erode any remaining barriers toward combining art from different fields. Makes sense, since bioinformatics inventions are inevitably a combination of CS and biotech, etc.

  35. Ugh!

    “Knowledge?”

    “Depth of knowledge?”

    Legally, in my humble opinion, a person of ordinary skill the art is deemed to know the entire contents of the prior art in the related field. The search for the person of ordinary skill in the art really is a search for the relevant art that it took to make the invention.

  36. notion recently run up the flagpole by the court in London, England, that the THOSITA relevant for obviousness might not be the same as the THOSITA to be consulted when enablement is the issue.

    That makes me sad.

    [throws Adele CD in trash]

  37. After we have debated this we can move on to that other notion recently run up the flagpole by the court in London, England, that the THOSITA relevant for obviousness might not be the same as the THOSITA to be consulted when enablement is the issue.

  38. @Dennis: Thanks for the additional comments.

    Admittedly, I am skeptical about the effectiveness of presenting affidavits to an examiner. I have come to realize that most examiners reach their conclusions simply by comparing the claims to a selective portion of one or more references. If they think it’s close, they will reject the claim – again, end of story.

    Every time – and I mean, every time – I have contested the examiner’s conclusion, I get two responses:

    (1) I disagree, so you can take it up with the Board if you don’t like it (and we’ll reconsider when we get its decision several years from now).

    (2) Rather than describing the difference, put it in the claim.

    I have found that taking option (2) is the fastest way to overcoming the references and getting an allowance. Virtually the only times when I won’t take that approach are where the claims already clearly and indisputably include the point of novelty, and the examiner is either blatantly misconstruing the claims or blatantly misreading the reference.

    Since adopting this approach, my allowance rate has skyrocketed. And I’ve come to feel that, for most cases, this is an acceptable compromise – in accordance with affording the examiner “the broadest reasonable interpretation” of the claims.

  39. “Part of the reason for this is that the examiner is roughly equivalent to a PHOSITA.”

    Not so. The examiner is not “equivalent” to a PHOSITA, nor have the courts ever considered examiners to be. The reason that examiners never bother to resolve the level of ordinary skill in the art is because the courts have held that failure to do so is harmless error when the applied prior art reflects an appropriate level. And because nobody, except that poster on Karen Hazzah’s blog, ever challenges examiners to resolve the level of ordinary skill in the art.

  40. you would require the examiner to provide some evidence that FancyBiology1 “would know” to consult with FancyBiology2

    There is no evidence anywhere in the recorded history of human civilization that biologists ever leave their offices to communicate with anyone, let alone other scientists.

    There is a fragment of a scroll from the early 17th century which has been interpreted to suggest that a French frog biologist once proposed that a meeting of frog biologists be held at the same site as a meeting of toad biologists but this interpretation has been disputed. More importantly, there is no evidence that the meeting every took place.

  41. David, I largely agree with you.

    Certainly, the actual teachings found in the prior art is much more relevant than the level of skill in the art or the definition of PHOSITA.

    Further, examiners currently make no effort to consider what a PHOSITA should look like. Part of the reason for this is that the examiner is roughly equivalent to a PHOSITA.

    If this is going to be an issue in prosecution, it must be the applicant who raises it. The right way to raise the issue is for the applicant to identify the level of ordinary skill and provide factual evidence of how a PHOSITA would not know to combine particular references or would not find the invention obvious as claimed. This can be very effective through the use of affidavits from disinterested technical experts.

    As discussed above, this is typically in the context of analogous arts test, but it can also be used against other obviousness arguments.

  42. “If a person of ordinary skill in FancyBiology1 would know to consult a person of skill in FancyBiology2…”

    And how would you prove that FancyBiology1 “would know” to consult FancyBiology2? I’m assuming that you would require the examiner to provide some evidence that FancyBiology1 “would know” to consult with FancyBiology2, or would it be the typical examiner “finding of fact” that the examiner would “take Official notice that it would be inherently obvious for FancyBiology1 to consult with FancyBiology2 as a matter of routine experimentation and optimization that, in the absence of criticality and unexpected results, would be a matter of design choice”? See In re Bullsh!t.

  43. IANAE asked: How is this fundamentally different from the not-at-all-controversial concept of analogous arts?

    This is a tangential reply, but I personally believe that the analogous arts test (in its implementation) is fairly controversial. In particular, the Klein decision is in direct tension with KSR v. Teleflex.

  44. PHOSITA (and THOSITA) completely don’t matter in the wake of KSR.

    103 rejections typically cite two or more references, and then present the statement that “a person having ordinary skill in the art would be able to combine these references.” Full stop, end of story.

    I can’t even remember the last time that an examiner offered anything more than that completely conclusory statement – e.g., even a basic explanation for why the references are compatible; why a PHOSITA (or even THOSITA) would know of both or all of them; or any motivation to combine the references. There is no evidence or support; it is simply the examiner’s subjective opinion. And even in the face of evidence against (e.g., teaching-away), examiners won’t budge on that issue unless pushed.

    In other words – what PHOSITA or THOSITA actually know is no longer relevant. All that matters, currently, is that every element of the claim is presented in some reference – irrespective of the improbable addition of that reference to the others.

    It begs the question whether this is what Kennedy intended when issuing the majority opinion in KSR. The holding – ” application of the bar must not be confined within a test or formulation too constrained to serve its purpose” – is being applied by the USPTO as: “Absent clear evidence to the contrary, this combination is completely up to the examiner’s discretion.” I think that the USPTO is playing with fire by relying too heavily (which is to say, entirely) on the KSR decision on these issues – and that, given one (or several) cases where examiners’ obviousness judgments were incorrect and ridiculous, the CAFC and SCOTUS may cut back on the extent of that freedom.

  45. link to google.com

    Taking a look at a hypothetical first claim that doesn’t exist one could see how a hypothetical application that doesn’t exist might draw a rejection.

    It appears that at least one hypothetical inventor that doesn’t exist might just believe himself to be not only the inventor of a cardboard bike, but of any pretty much any driven vehicle that has a pulpable wheel and hub assembly. That hypothetical inventor who doesn’t exist may very well be, but then again, he may not be.

  46. Even many mechanical inventions now require the assistance of a software engineer for their control systems.

  47. You got that about right. This is one of my favorite BPAI decisions – I don’t know why we don’t see more that take this approach. link to 1201tuesday.com . In this case, the examiner unsuccessfully relied on In re Leshin, with a very large helping of “lack of criticality means obvious design choice.” A little In re Keller was thrown in for good measure.

  48. Wait til the examinertard who picks up his application dismisses it with “obvious choice of material” and cite to In re Leshin. Maybe through in some routine experimentation and optimization to round out the rejection. Lack of criticality and/or unexpected results for dessert.

  49. How is this fundamentally different from the not-at-all-controversial concept of analogous arts? If a person of ordinary skill in FancyBiology1 would know to consult a person of skill in FancyBiology2, then surely FancyBiology2 is an analogous art to FancyBiology1 no matter how we get there.

    Of course, if it’s just the application itself that addresses itself to multiple arts, then we have to contend with the grim specter of hindsight. But if artisans normally team up, then “ask that other guy what he knows” is surely within the level of ordinary skill in the art, and relevant to any obviousness inquiry.

  50. The concept of the person skilled in the art sometimes being a team of people is also present in Canadian law (Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61)

    The main impact seems to be that the inventive step needs to be higher in fields where teams of researchers are routine (pharmaceuticals for example) than in fields where the lone inventor might still reign supreme (certain mechanical arts).

    What is interesting is that this policy has no direct statutory support, and may in fact be contrary to public policy (if patents are considered a good thing indicating research activity which wouldn’t otherwise be undertaken, why make patents more difficult in those fields that most require significant investment, such as hiring a team of researchers?

  51. I believe that in general US courts have been ignoring any distinction between a single “person having ordinary skill” and a “team of persons having ordinary skill.” And I think that is generally correct because, as you point out, inventions are often the result of collaboration and, depending on the field, such collaborations are a practical necessity (given the much greater amount of time it would take in many situations to reduce the invention to practice).

    On the other hand, one might argue that there have been implicit suggestions to the contrary, e.g., in opinions where an invention was deemed non-obvious as a result (at least in part) of the time, money and manpower required to reduce the invention to practice. I have no idea how many such cases there are but I seem to recall reading a few over the many years.

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