© 2017 Head, Johnson, Kachigian & Wilkinson, PC

  • Cassandra L. Wilkinson

Who Is A Person Of Ordinary Skill?

You have proven that your patent idea is both useful and novel, but now you must overcome the third obstacle to patentability, obviousness. There is someone out there trying to stop you! Nobody has ever seen or heard him, but here he is again on your latest Office Action hiding under the requirements of 35 U.S.C. §103. Section 103 (a) describes non-obvious subject matter as one of the criteria for patentability: “A patent may not be obtained … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” (emphasis added). The subject of our tale is “a person having ordinary skill in the art to which said subject matter pertains” (PHOSITA in the United States). In the legal world, this entity is called a legal fiction. Black’s Law Dictionary defines a legal fiction as “[a]n assumption that something is true even though it may be untrue, made especially in legal reasoning to alter how a legal rule operates.” Legal fictions operate in every area of law. In tort or contract law, the “reasonable man” is used to measure the behavior of an individual involved in a lawsuit. In corporate law, the term “corporation” is used to describe a business entity as an individual in order to ascribe to it the bundle of rights associated with such an organization. Similarly, the person skilled in the art is the patent world’s legal fiction. In this case, the PHOSITA serves to look at each invention in context. After the Examiner has concluded that the proposed invention is useful and does not already exist in the prior art, his or her next task is to examine it for obviousness. The Patent Examiner must evaluate the patent application for non-obviousness by using this legal fiction as a reference point in light of the technical field to which the invention belongs. The Examiner’s job, or at times the job of a jury in a patent infringement lawsuit, is to ask, if provided with all the prior art, would it have been obvious for a skilled person to come up the same idea? In other words, would someone in the field have come up with the idea devoid the applicant’s contribution? The PHOSITA is neither genius nor layperson. He possesses skills and knowledge in the particular field in question, but he is not an exception. Section 2141.03 of the Manual of Patent Examining Procedure describes the Level of Ordinary Skill in the Art as knowledgeable regarding the relevant prior art, capable of using the prior art creatively, and capable of understanding the “scientific and engineering principles applicable to the pertinent art.” You can imagine that the definition leaves itself open to interpretation. As with any area of law, the patent world relies on case law to better put a theoretical principle into practice. One case, Environmental Designs, Ltd. v. Union Oil Company of California, 713 F.2d 693 (Fed.Cir. 1983), wrestled with the issue of objectively defining a person of ordinary skill and came to the following conclusions: “Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” The ruling went on to clarify, “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. The important consideration lies in the need to adhere to the statute, i.e., to hold that an invention would or would not have been obvious, as a whole, when it was made, to a person of 'ordinary skill in the art'--not to the judge, or to a layman, or to those skilled in remote arts, or to geniuses in the art at hand.” The PHOSITA had his moment of glory in the Supreme Court case of KSR v. Teleflex, 550 U.S. 398 (2007), in which a Court of Appeals’ decision on obviousness was overturned based on the definition of his abilities. In this case, the Court determined that, “A person of ordinary skill is also a person of ordinary creativity, not an automation.” In other words, the standard for the “person having ordinary skill in the art” was somewhat expanded. He has not only common sense but also the ability to look at the prior art with some level of creativity. This increased ability of the PHOSITA has made the obviousness test more difficult to overcome: bad news for the aspiring patent seeker; good news for those holding patents. The Court was careful to emphasize that it is the breadth of the claim that ultimately determines obviousness, stating, “One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” These cases and others have further aided the Patent Examiner in his task. The Examination Guidelines for Determining Obviousness is not law, but instead, an aid to assist the Examiner in interpreting substantive law. The guidelines are “believed to be fully consistent with the binding precedent of the Supreme Court.” The KSR v. Teleflex decision is binding precedent in terms of the interpretation of Section 103. In a May 3, 2006 memorandum to technology directors, the USPTO Deputy Commissioner admonished examiners to “identify why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed,” to temper the newly-acquired creative powers ascribed to the PHOSITA. Our little friend also rears his head in other aspects of the patent process, both in the United States and internationally. For example, the Examiner also uses the PHOSITA to determine whether or not the description has been sufficiently disclosed. Section 112 of Title 35 of the United States Code states: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The obviousness test may be one of the grayest components of patentability. In a field and practice as precise as patent law, it may seem odd to give this fictitious person so much influence. His level of skill and creativity determines the ease or difficulty you will have in passing the obviousness test in your patent prosecution. As much as he might thwart your patent prosecution, someday, when you have your patent, he may just come in handy!