Reminder: PHOSITA is not an Automaton; What is an Automaton?

University of Maryland Biotech Institute v. Presens Precision Sensing (Fed. Cir. 2017)

In a non-precedential decision, the Federal Circuit has affirmed the USPTO handling of the inter partes reexamination of Maryland’s U.S. patent No. 6,673,532. The examiner rejected claims 1, 3– 6, 9–11, 13–16, 19, and 20 as obvious under 35 U.S.C. § 103.  That determination was affirmed by the PTAB and now by the Federal Circuit.

Note, the inter partes reexamination was filed in 2011 and at that time Maryland did not challenge the process on Eleventh Amendment Immunity grounds.  However, the same patent was challenged in an Inter Partes Review (IPR) in 2016 and the PTAB recently dismissed the petition on sovereign immunity grounds. [IPR2016-00208 28 – Termination – Dismissed After Institution].  In the appeal, Maryland did not raise the issue.

Here, the patent covers growing cells in a cultivation vessel that includes various LEDs and light sensors.   This process can be used to make several non-invasive observations, including oxygen level, optic density, pH, etc.


The prior art rejection combined two references.  One of which taught what was claimed – certain sensors within the cultivation vessels themselves – and the other reference disclosing the sensors “located in individual flow-through units outside the cultivation vessel.”  The second reference was needed though to complete the obviousness analysis.

On appeal, the patentee argued that combining the references was not proper because of the two different vessel configurations.   The Federal circuit rejected that approach – holding that PHOSITA is “not an automaton . . . limited to physically combining references.”  While a court may ask whether “substantial reconstruction and redesign” would be necessary to combine the references.  However, as KSR demands, “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”

Obviousness affirmed

= = = = =

As an aside, patent law may do well to move-on from the automaton language.  Nobody knows what an automaton really is — does someone have one they can show me? How does an automaton compare with contemporary AI?

37 thoughts on “Reminder: PHOSITA is not an Automaton; What is an Automaton?

  1. 6

    “Automaton” in the obviousness context seems to refer to mechanical machines, not the traditional computer science.

  2. 5

    One thing I find interesting is all the talk of the EPO being superior. But, I get A LOT of applications where the claims get a clean IPRP (i.e., all novel and inventive step) and get allowed at the EPO. And, yet, those US examiners keep finding better art and rejecting the claims.

    This is happening to me all the time now. Like once a month.

    1. 5.1

      Night, thanks for that but have you not been following the sustained and widespread outcry in Europe, how EPO search quality has seriously deteriorated in recent years? And how Examiners at the EPO are under pressure from i) EPO shareholders ii) jet-setting EPO President Benoit Battistelli and iii) BB’s hatchet men, to let any old rubbish through to issue. The only metric that BB’S managers focus on is “Time to Issue”.

      It’s what the EPO’s bulk users (filers) demand though, isn’t it? And the customer is always right, isn’t he?


          It’s not the “system” I tout so enthusiastically, anon. Rather, it is the substantive provisions of patentability/validity in the EPC and the established caselaw of the Boards of Appeal of the EPO.

          The current shareholders and EPO President can claim no credit whatsoever for any of that. But they can legitimately be criticised for the recent downturn of search quality at the EPO.

          Who is “allowing” it? Ultimately, the voters of the 38 Nation States of the European Patent Organisation.

          Vox populi, Vox bovis, it has been said. Mind you, even though cows have no problem spotting the snake in the grass, human voters are virtually blind to things like that.


            substantive provisions…

            …as applied IS the system.

            You do not get to speak of “substantive provisions” in a vacuum. They only mean what they mean in application, after all. All else is counting angels on the heads of pins.

    2. 5.2

      To be fair, would the art found by USPTO examiners support a problem-solution inventive step objection in the EPO?

      Whats inventive there, may be obvious here; and whats non-obvious here, may lack inventive step there. I’ve seen this on a number of occasions over the years.

      1. 5.2.1

        “I’ve seen this…..”. I daresay. What to do about it though?

        Perhaps have the judges debate the merits and de-merits of each Approach?

        Like what the patents judges of Europe do, in their biennial get togethers, so as to bring gradual convergence of the jurisprudence of 38 Sovereign States?


          What do you do about it?


          You respect the sovereign differences – THAT is what you do about it.


            Respect? The answer to everything? Up to a point, Lord Copper. Up to a point.

            Obviousness is a question of law, founded on findings of fact.

            If the found facts are different, then it is unremarkable that the legal finding differs, jurisdiction to jurisdiction. And I agree, fact-finding processes vary, from jurisdiction to jurisdiction.

            But when the found facts are in substance the same, it is problematic, when different jurisdictions differ over the legal conclusion, the obviousness (or not) of the subject matter of any given claim.

            As far as I know, the meaning of simple dictionary word “obvious” stays the same, as you move from one jurisdiction to another. Do you want to dispute that assertion?


              I do not “get” the Lord Copper reference, and frankly just dont feel the need to look it up.

              As to “the answer to everything” – that’s a pretty strawman, but one that CLEARLY does not fit as I have been VERY vocal about NOT falling back to “respect” as a reason to NOT place one particular branch of our sovereign government above the Constitution.

              As to “But when the found facts are in substance the same, it is problematic, when different jurisdictions differ over the legal conclusion,” that quite misses the point that THAT is a feature and not a bug of the ability of different sovereigns to choose – for themselves – just what law those same found facts get applied to. You see a problem and the actual problem is you seeing a problem where none exists.

              Also, the use of plain dictionary does not suffice for legal terms of art – I would think that after decades of involvement in this industry, you would understand that.

  3. 3

    The right result and all the reasoning that was due and deserved.

    DC: The Federal circuit rejected that approach – holding that PHOSITA is “not an automaton . . . limited to physically combining references.”

    The “automaton” refers to a robot (or an animal, including a low-functioning human) that can assemble existing items into a new combination but is incapable of modifying the forms of the individual items or creating new forms “from scratch”.

    In the context of obviousness, this is a perfectly appropriate (and “classic”) application of common sense, a la KSR.

    Let’s say reference A teaches a flask with a spherical bottom for growing bacteria. Reference B teaches sensors for monitoring stuff that’s happening flasks. Absent some unexpected results, a patent claim which describes a culture flask with an ovoid bottom plus sensors is obvious in view of A and B plus the common sense that says that the sensors will work on any flask. The PHOSITA can make a flask with an ovoid bottom. It isn’t limited to the exact shape of the flask depicted in Reference A because (here it comes) “PHOSITA is not an automaton.”

    1. 3.1

      I agree with your analysis.

      As an examiner, some of the easiest final rejections are when the Applicant writes a response showing how the two references would be combined strictly by putting one “as-is” with the other “as-is”, and since it isn’t the exact same as how I said they can be combined, my rejection is wrong. The “automaton” language is perfect in those situations. That, and the fact that it is the combined “teachings,” not the combined “physical structure” that obviates the claim.

      1. 3.1.1

        Of course it works both ways — just because two structures are physically combinable in principle does not mean that it would have been obvious to do so, especially when the teachings of the references suggest otherwise. Some of your colleagues nonetheless refuse to acknowledge this — present company excepted, of course .

      2. 3.1.2

        In KSR the court did state that “Often, it will be necessary to look to interrelated teachings of multiple patents…in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed.” 550 U.S. at 418. So yeah, the combination has to actually result in the claimed invention. Not just, “Well, these two or three references contain all the elements claimed and I found some reason to combine their ‘teachings’ and the combination would somehow magically result in the ‘element in the fashion claimed.'” If you can’t explain how your combination results in the “elements in the fashion claimed” and provide evidence for that explanation, then your rejection is improper.

        But you knew that.


  4. 2

    “The PHOSITA is a person of comprehensive knowledge, but no creativity.”

    Not sure I can agree with this statement, GL. I have always interpreted the “automaton” statement in KSR to mean that PHOSITA has some level of creativity, its just not clear how much.

    1. 2.1

      Not sure I can agree with this statement, GL.

      I know I don’t agree.

      The PHOSITA has an ordinary level of creativity in the art. That’s the whole point of having an obviousness filter: get rid of the patent claims that represent only ordinary problem-solving that doesn’t merit the reward of a patent.

      IMPORTANT NOTE: There is a huge space between “ordinary problem-solving” and “genius.” Don’t let yourself be confused.

      1. 2.1.1

        Why the outcry, that the PHOSITA is not an automaton? Did anybody ever seriously suggest he/she was?

        I don’t know what KSM “ordinary” creativity or problem-solving is. I don’t know when “ordinary” (not patentable) makes the transition to patentable (when it is extra-ordinary perhaps?). All this emphasis on “ordinary” is a bit too ephemerally subjectively elastically vague for my liking. This is legal thinking at a very ordinary level, to my mind, which does nothing to clarify the law of the issue patentable Y/N.

        What I do know is that technical problem solving in the real world typically involves a survey of the published literature, for hints or suggestions how to solve the problem at hand. If your solution is what the literature suggests to the PHOSITA, then it is prima facie obvious and unpatentable. Conversely, if your claimed solution is one of which there is no hint in the published literature, then it is prima facie not obvious.

        I regret that objective binary TSM doesn’t hold sway in the USA. In ist EPO embodiment, it has worked fault-free and oh so smoothly, with no systemic bias, these past 38 years, and is by now totally familiar, established and unassailable.


          “Did anybody ever seriously suggest [that the PHOSITA is an automaton]?”

          Yes. All the time Applicants argue that a PHOSITA would not have been able to combine the teachings of two references in the same field directed to similar devices because of some unrelated teachings in the references. “You see, Ref. A teaches using the printer in a copy shop, while Ref. B teaches using the printer at home, so a PHOSITA couldn’t have combined the toner cartridge of A with the toner cartridge of B.”

    2. 2.2

      That is, of course, a perfectly fair response. You are quite correct that this is what KSR meant. My point is that KSR is wrong. KSR had neither statute nor precedent to support its assertion that the person of ordinary skill possesses ordinary creativity. That assertion runs counter to over a century of prior precedent on this point, in the U.S. and elsewhere in the common-law world.

      Even against the backdrop of the Supreme Court’s fetid welter of boneheaded patent law opinions, KSR stands out as a blunder of truly breathtaking proportions.

      1. 2.2.1

        My point is that KSR is wrong. KSR had neither statute nor precedent to support its assertion that the person of ordinary skill possesses ordinary creativity. That assertion runs counter to over a century of prior precedent on this point,

        What “precedent” are you referring to? The statute is from the fifties. I don’t remember any Congressional testimony to the effect that under no circumstances could any amount of creativity be granted to the ordinary artisan, nor do I remember any testimony to the effect that the point of 103 was to reward the lowest possible level of creativity in any given art. I mean, that would be kind of silly and counterproductive. It’s the kind of thing that could eventually cause Congress to take remedial action to rid the system of the poison that was introduced into it …


          You are quick to say what you don’t remember….

          How about volunteering anything that you do remember to support the opposite position that you want to take in regards to Greg’s comments?

      2. 2.2.2

        “My point is that KSR is wrong.”

        I wouldn’t say the result was wrong (the claims were obvious), but the “decision” and/or its “reasoning” were horrible.

        One of ordinary skill in the art can apply known solutions to known problems. That’s pretty much who/what PHOSITA is. To the extent that PHOSITA has “ordinary creativity” or any “creativity” at all it is the ability to look to “teachings” outside of the claimed field of endeavor for those known solutions. So the mechanism that is used to hold a Murphy bed in its upright folded position is certainly applicable to a treadmill that has a fold up track. PHOSITA has the “creativity” to look outside of “just” treadmill prior art when trying to solve the problem of how to maintain the track in the folded up position.

        But no, a PHOSITA cannot fit together references like pieces of a jigsaw puzzle to arrive at a claimed invention without hindsight. I would very much like to see J. Kennedy have 2, 3, 4 references put in front of him and be told, “Go ahead and put these together to arrive at the claimed invention.” I’m sure the first question the dolt would ask is, “Well, what is the invention?”

        As for J. Kennedy’s concerns with “ordinary innovation” and “real innovation,” those terms have no meaning whatsoever and demonstrate his (and/or his law clerks’) clear lack of understanding of what innovation is.

  5. 1

    I have no beef with this decision, which would probably hold good even if it were decided on the day after Hotchkiss, with none of the intervening confusion in obviousness jurisprudence. I agree, however, that we should ditch talk of “automatons,” mostly because such talk is just plain wrong. The person of ordinary skill is most definitely not a person of “ordinary creativity” (whatever that means). The PHOSITA is a person of comprehensive knowledge, but no creativity. A lot of pointless ink gets spilled deciding whether a given outcome reflects the sort of “ordinary” creativity that pertains to an automaton, when really this consideration is simply irrelevant.

    1. 1.1

      A PHOSITA has know-how, not inventiveness. The automaton nonsense is a way of substituting words for proof.

      The larger issue that still remains is motivation. Why would somebody compliant this with that? There has to be a known problem.

      1. 1.1.1

        Why to reduce weight, save energy, improve efficiency, reduce complexity, or any number of “nonce” rationales.


            Is your line of thought:

            Why invent at all?

            If Invention has no motivation, then you “pass,” but if it has motivation (also known as utility), then it fails?

            Sounds like a medieval witch test…


              I’m not sure if your “why invent at all?” was addressed to me, but I was attempting (perhaps unsuccessfully) to sarcastically point out that examiners often “invent” inapt rationales (what I called “nonce” rationales — i.e., meaningless in context) in an attempt to support a rejection.

    2. 1.2

      Maybe “creativity” is the wrong word, and could be replaced with “understanding.” A PHOSITA has ordinary understanding of the art. So if one reference teaches an important features, but includes a hook/loop connector, and another teaches a screw/bolt as a connector, a PHOSITA would understand how to make the screw/bolt work as a connector in place of the hook/loop, even if other features in the references may be incompatible and need minor modification to facilitate the use of the screw/bolt instead of the hook/loop.

      1. 1.2.1

        I think giving the PHOSITA “understanding” of technical operability is a better formulation. The term “creativity” is too loaded with connotations of inventiveness. Semantics matter — we are dealing with language after all.

    3. 1.3

      The PHOSITA is a person of comprehensive knowledge, but no creativity.

      Just so we’re clear, person sees a tv show where the character is in a burning building. Character finds a table, throws it through the window, and jumps out the broken window.

      Person later gets trapped in a burning building. In the room is no table, but there is a chair.

      Your argument is that the person of ordinary skill in the art will die because they lack the motivation to throw the chair through the window? That’s your conception of non-obviousness?

      1. 1.3.1

        Flip the script, Random:

        For argument’s sake, say someone obtains a patent for a method of escaping a burning building by throwing a table through a window to create an escape path.

        Are you saying that someone throwing a chair through a window through a window to create an escape path from a fire would infringe?

        (We all know that you would be screaming that a broader claim of a method of escaping a fire by throwing an object through a window would meet with your disapproval)


          Exactly. Random Examiner would be here bragging about how he rejected a claim to throwing an object through a window because the spec only disclosed 1,000 examples of objects that could be thrown through a window, but not every possible object that could be thrown through a window.

          He has no understanding of written description.

      2. 1.3.2

        Your analogies are invariably terrible.

        And you have that annoying tendency, as most examiners do, to misstate the argument the other side is making and then respond to that misstatement.

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