The Person of Ordinary Skill in the Art and the Smart POSA / Dumb POSA Dilemma
By: Michael A. Leonard II
Patent parlance makes frequent mention of a person of ordinary skill in the art (often abbreviated “POSA” or “PHOSITA”). This hypothetical person is used as the
standard for determining what would, and would not, have been known by ordinary individuals in the art at the time that the invention was made. While varying from
invention to invention, with respect to the same invention in a patent application, the skill of a POSA that is applied in an Office Action should not vary from
rejection to rejection. The lack of the application of a uniform POSA standard creates a discrepancy in the Office Action that Applicants may use to attempt to
overcome non-art-based rejections and address the Smart POSA / Dumb POSA dilemma.
MPEP § 2141.03(I) states that “[t]he person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the
invention.” Some factors that may be considered in determining the level of skill of a POSA include:
(A) the type of problems encountered in the art;
(B) prior art solutions to those problems;
(C) rapidity with which innovations are made in the art;
(D) sophistication of the technology; and
(E) educational level of active workers in the field.
(Id.). As noted by MPEP § 2141.03(I), every factor may not be present in each case and one or more factors may predominate the others. However, “[i]f the only
facts of record pertaining to the level of skill in the art are found within the prior art of record, the court [CAFC] has held that an invention may be held to have
been obvious without a specific finding of a particular level of skill where the prior art itself reflects an appropriate level” (MPEP § 2141.03(II)). It is necessary
for the Examiner to maintain objectivity. “The examiner must ascertain what would have been obvious to one of ordinary skill in the art at the time the invention was
made, and not to the inventor, a judge, a layman, those skilled in remote arts, or to geniuses in the art at hand” (see MPEP § 2141.03(III). The POSA standard is used
for claim interpretation (see MPEP § 2111), written description rejections and enablement rejections under the first paragraph of 35 U.S.C. 112 (see MPEP §§ 2163 and
2164), and generally for objections and rejections in the Examination process.
While a uniform POSA standard should be applied throughout the objections and rejections present in an Office Action, this is sometimes not the case. Most commonly, the
discrepancy occurs when a POSA with a relatively high level of skill is applied for art-based rejections under 35 U.S.C. §§ 102 and 103, but a POSA of considerably
lower skill is applied to non-art-based objections and rejections. The error in these situations is usually on the side of the lower standard applied to the
non-art-based objections and rejections. For example, in an Office Action rejecting claims directed to a fairly complex telecommunications invention, an Examiner may
combine art directed to complex protocols and advanced system architectures. However, the Examiner may then raise non-art-based objections and/or rejections to claims
reciting a “program” where the specification uses the term “application” or “software”, alleging that there is either no antecedent support (which is not required) or
that the terms are not adequately disclosed such that a POSA would understand them. However, it does not seem fitting that a POSA who is sophisticated enough to
understand and combine complex cited art would fail to recognize that the terms “software”, “application” or even “software application” pertain to a program.
In such situations, it may be beneficial to include arguments along the lines of the following:
The Office Action also asserted that a POSA would be sophisticated enough to apply [CITED ART] to allegedly arrive at the features of the claimed invention. However,
Applicants respectfully submit that the Office Action has not applied a uniform POSA standard since a POSA who is sophisticated enough to understand and combine
[CITED ART] would almost certainly appreciate that [CLAIMED FEATURE] is included within the scope of the specification’s discussion of [SPECIFICATION TERM]. Applicants
respectfully submit that the art-based rejections and the present [REJECTION OR OBJECTION] under [SECTION] are antithetical to one another with respect to the POSA
standard. A single, uniform POSA standard must be applied throughout the Office Action. Accordingly, either the art-based rejections or the non-art based
objections/rejections must be withdrawn.
These arguments highlight the discrepancy in the applied POSA standards. Further, the arguments point out that only one standard may be used without attempting to
establish on the record precisely what the skill of a POSA is, which may create estoppel issues in litigation.
When a different POSA standard is applied to the non-art-based objections and/or rejections in an Office Action than the POSA standard that is applied to the art-based
rejections, it may be beneficial to argue that this discrepancy in the POSA standard requires either the non-art-based objections/rejections or the art-based rejections to
be withdrawn. Generally, Examiners will reconcile this discrepancy in favor of maintaining the art-based rejections. In this manner, the Smart POSA / Dumb POSA
dilemma may be used to Applicants’ advantage during patent prosecution.