Saturday, December 10, 2016

Who really created the PHOSITA, the Frankenstein monster?

As discussed in the IPBiz post
PHOSITA, the Frankenstein from the US Supreme Court?
, a 1966 article by Soans used the word "Frankenstein" to describe PHOSITA, which creature was supposedly created by the courts. In Kimberly-Clark, Judge Giles Rich mentions
-- the statutory hypothetical "person having ordinary skill in the art" -- suggesting the "creature" was created by Congress in the 1952 Patent Act.

In Kimberly-Clark v. Johnson &Johnson, 745 F.2d 1437 (CAFC 1984), Judge Giles Rich wrote:

As the above collection of quotations makes clear, the courts were constantly faced with situations where the applicant or patentee had actually made a new and useful invention, and therefore was an inventor, in every sense of the word but one -- he had invented something which the courts, viewing prior art, felt did not involve the quality of "invention" and a reason for denying a patent had to be rationalized. There seems to have been a felt need to find a reason for saying the applicant or patentee either had not made an "invention" or should not be called "an inventor." In the lack of novelty cases it was easy enough to say the "statute is inexorable," because it required novelty; but in a "lack of invention" case there was no statute and to show that "an invention" had not been made, or that the requirement for "invention" had not been met, the applicant or patentee was, in effect, viewed from on high and treated as though he knew things he really did not know in order to determine his rights from a social point of view. There was no one other than the inventor to pin it on. By presuming he knew all the prior art, he could be said not to have made "an invention" and, not being "an inventor," he could be denied a patent or, if he had one, it could be invalidated, as well-developed law required. This line of reasoning having been once established, the courts, including our predecessor court as in Winslow, mentioned above, decided cases on the basis of the axiom -- the applicant (or patentee) is presumed to have knowledge of all material prior art -- without giving the situation further thought. But a bad axiom is like a noxious weed, a thriving plant in the wrong place interfering with the growth of more desirable plants.

Basing the rationalization of decisions on a fiction -- which the presumption of knowledge is -- it has been unusual that opinions have explained the real reason for the denial of patent rights, which is the basic principle (to which there are minor exceptions) that HN9Go to this Headnote in the patent should be granted which withdraws from the public domain technology already available to the public. Graham v. John Deere Co., 383 U.S. 1, 6, 148 U.S.P.Q. (BNA) 459, 462, 15 L. Ed. 2d 545, 86 S. Ct. 684 (1966). It is available, in legal theory at least, when it is described in the world's accessible literature, including patents, or has been publicly known or in the public use or on sale "in this country." 35 USC § 102(a) and (b). That is the real meaning of "prior art" in legal theory -- HN10Go to this Headnote in the is knowledge that is available, including what would be obvious from it, at a given time, to a person of ordinary skill in an art. Society, speaking through Congress and [*1454] the courts, has said "thou shalt not take it away."

Since January 1, 1953, the effective date of the 1952 Patent Act, the implementation of that social policy has not required courts to use the legal fiction that an inventor must be presumed to know the "prior art." The inventor, for the purposes of legal reasoning, has been replaced, as some courts have discovered, by the statutory hypothetical "person having ordinary skill in the art" 5 who has been provided by 35 USC § 103. Since that date, there has been no need to presume that the inventor knows anything about the prior art.

[footnote 5 is to the Soans 1966 article in IDEA.]

Since we believe that progress in legal thinking is not only possible but highly desirable when it simplifies such thinking, we believe the time has come to discontinue this particular fiction of the patent law. Congress has given us in § 103 a substitute for the former "requirement for [**45] invention," which gave rise to the presumption, and that substitute, being statutory, should be used exclusively. HN11Go to this Headnote in the case.We hereby declare the presumption that the inventor has knowledge of all material prior art to be dead.

In Standard Oil v. American Cyanamid,774 F.2d 448 (CAFC 1985) Judge Giles Rich wrote:

The issue of obviousness is determined entirely with reference to a hypothetical "person having ordinary skill in the art." It is only that hypothetical person who is presumed to be aware of all the pertinent prior art. The actual inventor's skill is irrelevant to the inquiry, and this is for a very important reason. The statutory emphasis is on a person of ordinary skill. Inventors, as a class, according to the concepts underlying the Constitution and the statutes that have created the patent system, possess something -- call it what you will -- which sets them apart from the workers of ordinary skill, and one should not go about determining obviousness under § 103 by inquiring into [***298] what patentees (i.e., inventors) would have known or would likely have done, faced with the revelations of references. A person of ordinary skill in the art is also presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which. See the last sentence of § 103, supra.

It was up to the court here to determine the level of skill of the hypothetical person of ordinary skill and what that person would have been able to do when in possession of the prior art, the scope and contents of which the court has also determined. For a more extensive, and the latest, discussion of this court's views on who is presumed to know the prior art, see Kimberly-Clark Co. v. Johnson & Johnson, 745 F.2d 1437, 1449-1454, 223 U.S.P.Q. (BNA) 603, 610-614 (Fed. Cir. 1984).

Footnote 3 of Standard Oil alludes to the prior decision, written by Judge Rich, in Winslow, 365 F.2d 1017 (CCPA 1965) :

We think the proper way to apply the 103 obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references - which he is presumed to know - hanging on the walls around him. One then notes that what applicant Winslow built here he admits is basically a Gerbe bag holder having air-blast bag opening to which he has added two bag retaining pins. If there were any bag holding problem in the Gerbe machine when plastic bags were used, their flaps being gripped only by spring pressure between the top and bottom plates, Winslow would have said to himself, "Now what can I do to hold them more securely?" Looking around the walls, he would see Hellman's envelopes with holes in their flaps hung on a rod. He would then say to himself, "Ha! I can punch holes in my bags and put a little rod (pin) through the holes. That will hold them! After filling the bags, I'll pull them off the pins as does Hellman. Scoring the flap should make tearing easier."

Thus does appellant make his claimed invention merely by applying knowledge clearly present in the prior art. Section 103 requires us to presume full knowledge by the inventor of the prior art in the field of his endeavor. We see no "hindsight reconstruction" here, but only selection and application by the examiner of very pertinent art. That is his duty

The text in Standard Oil was re-affirmed in Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) ("The person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art."). "The policy behind this presumption of knowledge is clear enough. In order to discourage wasteful or duplicative original inventive activity, the patent laws impose an absolute duty to research the entire pertinent prior art for a solution to a problem at hand." Chisum, supra note 47, 5.04[1], at 5-270.

-->Other mentions of monsters-->

**From footnote 301 of Abbott, 57 B.C. L. Rev. 1079 (2016) :

See Dan L. Burk, The Role of Patent Law in Knowledge Codification, 23 BERKELEY TECH. L.J. 1009, 1025 (2008) ("[T]he PHOSITA is a fictional composite, a conceptual construct imagined for the purpose of assessing the claimed invention against its technological antecedents."); Cyril A. Soans, Some Absurd Presumptions in Patent Cases, 10 PAT. TRADEMARK ©. J. RES. & ED. 433, 438-39 (1967) (railing against the judicially created "superhuman Frankenstein monster Mr. Phosita").

**From footnote 21 of Whisner, 108 Law Libr. J. 483 (2016), speaking of --"primarily geographically deceptively misdescriptive," PHOSITA, transformativeness --:

The four-word tongue-twister is right out of the Trademark Act, 15 U.S.C. § 1052(e)-(f) (2012). "PHOSITA" stands for Person Having Ordinary Skill In The Art. The acronym was coined by Cyril Soans, who asked rhetorically: "Would the patents subcommittee of the House Judiciary Committee have approved H.R. 3760 of the 82nd Congress if they had known that the person skilled in the art in Section 103 of the 1952 Act would turn out to be the superhuman Frankenstein monster Mr. Phosita? I think not." Cyril A. Soans, Some Absurd Presumptions in Patent Cases, 10 IDEA 433 (1966-1967). My thanks to Zahr Said, who offered these gems of jargon.


See also the 2007 post on IPBiz Was the TSM test rejected as a prerequisite for finding obviousness?

Also, from In re Joly, 376 F.2d 906 (CCPA 1967) :

Judge Rich in his Kirk dissent demonstrates that chemists of ordinary skill in the art would have no difficulty in using new and unobvious chemical products and processes once they are disclosed as required by section 112. They are "useful," under section 101, as tools, just as other professions have their particular "tools" with which to work. A judge needs no directions for using a new text or a new digest. In appellants' case they have invented or discovered and disclosed a process for the preparation of a product which is described to the steroid chemist as steroids carrying an ester function of an enol on ring A in position 2. Appellants point out that their process is "particularly simple and advantageous because it gives high yields while operating at room temperatures for both steps of the process." The Patent Office ignores this teaching, as does the majority, in reaching the conclusion that appellants' claimed inventions are "useless." Is this action warranted under section 101? I think not.

In this connection, it is interesting to note a recent advertisement of The Eastman Kodak Company which appeared on page 133 of the New Yorker Magazine for March 25, 1967. It describes in part the activities of what are termed "Two executives in charge of eagerness." The advertisement points out that the Eastman line consists of "some 5,000 organic chemicals for laboratory use." The text then continues:

* * * the fewer the starting materials, the more laborious the work. The more compounds that can be purchased from us, the more time our learned customers can put on research instead of preparing for research. * * *

As further pointed out in this advertisement, "Availability governs feasibility for many a research idea in its fetal stages."


The condition is unobviousness, but that is not all. The unobviousness is as of a particular time and to a particular legally fictitious technical person, analogous to the "ordinary reasonable man" so well known to courts. To protect the inventor from hindsight reasoning, the time is specified to be the time when the invention was made. To prevent the use of too high a standard - which would exclude inventors as a class - the invention must have been obvious at that time to "a person having ordinary skill in the art to which said subject matter [i.e., the invention] pertains." But that is not all; what must have been obvious is "the subject matter as a whole."

Also, from Saulsbury, 16 Mich. Telecomm. Tech. L. Rev. 439 :

See In re Gay, 309 F.2d 769, 772 (C.C.P.A. 1962). For example, consider a hypothetical inventor of the incandescent light bulb. She could satisfy the enablement requirement without revealing her preferred filament material, so long as the PHOSITA could discover how to make and use a bulb with that type of filament without undue experimentation.


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