Obviousness Evolution: From PHOSITA to THOSITA to AI

“Obviousness has seen many peaks and valleys since Hotchkiss v. Greenwood… Such variations are to be expected in the long term of renegotiations of the great bargain of the patent system responding to changed circumstances of technology, commerce and politics.”

PHOSITAThe 1952 U.S. Patent Act’s section 103 takes a pass at overcoming hindsight bias by positing a hypothetical Person Having Ordinary Skills In The (relevant) Art, i.e. a PHOSITA. It took 13 years thereafter for the Supreme Court to breathe life into PHOSITA in the Graham v. John Deere, 363 U.S. 1 (1966) Trilogy, and in another 41 years it adjusted the barriers of a U.S. Court of Appeals for the Federal Circuit (CAFC) diversion of teaching, suggestion or motivation (TSM) requirements for detection of non-obviousness in KSR Int’l Co. v. Teleflex, 550, U.S. 398 (Fed. Cir. 2007). In the middle of that evolutionary path, the newly minted CAFC under the 1982 Federal Courts Improvements Act addressed the PHOSITA qualifications in Environmental Designs Ltd. v. Union Oil Co., 213 F.2d 693 (Fed. Cir. 1983) with the criteria of education, experience, trends of innovation in the relevant art and objective (secondary) evidence, followed by several other cases trying to refine the Environmental Designs rubric.


From time to time in that progression, there was passing recognition that the article “a” applied to PHOSITA can be a single person or multiple person team of members with diverse skills and experience working cooperatively as a Team Having Ordinary Skill In The (relevant) Art(s), i.e. a THOSITA. The T for team can also include, in addition to persons, Tools of innovation, including established scientific truths from the Periodic Table to mRNA, measurement instruments, and last but not least, artificial intelligence (AI) with present imperfections, but by definition, having the means to overcome those imperfections over time.

The THOSITA concept has been acknowledged from time to time, e.g. in 2011 and 2012 Patently-O blog posts by Professor Dennis Crouch of Missouri (aka Mizzou) University School of Law. Professor Crouch included the caveat that obviousness is not designed around “skilled inventors” but rather a skilled craftsman of ordinary skill. But revisiting it in light of 2024 realities, adding the resources of team and tools, the level of ordinary skill can grow, particularly in evidence-backed and well-reasoned instances.

There is also a very long background history of invention in many instances as more-perspiration-than-inspiration as articulated by Thomas Edison and shown in his proof of the point by testing 1600 filament candidates before alighting (no pun) on effective ones for a long- lasting light bulb. This led to advancement in lighting up cities by Edison’s DC system backed by J.P. Morgan and the AC superior alternative systems promoted by Edison’s former employee Nikola Tesla, with backing from George Westinghouse. The perspiration path is codified in the last sentence of 35 U.S.C. §103(a):  Patentability shall not be negated (fka “negatived”) by the manner in which the invention was made. When AI ultimately achieves sentience (as surely it will) it will sweat, but not as profusely as Edison’s team. The proposition of PHOSITA having access to all (relevant) prior art (“the Winslow tableau”) was set forth by none other than the esteemed Judge Giles Rich during his CCPA tenure in Application of Winslow, 365 F.2d 1017 (C.C.P.A. 1966):

We think that the proper way to apply the 103 obviousness text to a case like this is first picture of the invention working in his shop with the prior art references — which he is presumed to know – hanging on the walls around him.

Ironically, 1966 was the year of the Graham trilogy, a long-awaited clarification for Judge Rich and colleagues seeking a guardrail against hindsight bias.

Decades later, Professor Crouch commented in a October 13, 2013, blog post: “I wonder if today, the analysis would begin with a Google’s search engine that had indeed indexed the prior art references?” Some doom-sayers predict inevitable obviousness of all claimed inventions in a world of teams and tools, including AI. But, to the contrary, the elevated persons’ (teams’) skills will raise the bar to some degree but not beyond achievement of ever better patented inventions, properly respected and protected.

No part of the Graham v. John Deere model for declaring obviousness or not should be neglected – not the invention as a whole, nor prior art, nor PHOSITA/THOSITA/AI capabilities, nor objective evidence (mislabeled as “secondary” evidence) when in the record and meeting a demanding test of proper nexus to the claim at issue. Obviousness has seen many peaks and valleys since Hotchkiss v. Greenwood, 52 U.S. 242 (1850). Such variations are to be expected in the long term of renegotiations of the great bargain of the patent system responding to changed circumstances of technology, commerce and politics. The recalibration of PHOSITA/THOSITA/AI will affect not only obviousness or not of utility patents, but also of design patents, recently roughly aligned with utility patents, and also, issues of definite claiming, claim construction, written description, enablement/predictability. While AI is presently hampered by a very low signal-to-noise ratio, that flaw can be reduced by AI itself after this present proprietary-rights-on-data kerfuffle is resolved.

The Arc of the Future

The best way to predict the arc of the future is to review the history well told by a long law review article: George M. Sirilla, 35 U.S.C. §103 From Hotchkiss to-Hand-to-Rich, The Obviousness Patent Law Hall-of-Famers, 32 JOHN MARSHALL L. Rev. 437-512 (1999). Note particularly a very long footnote 423 at pages 527-528 including the effect of Judge Rich’s Kettering address described in John Witherspoon’s Turning the Corner –  A Tribute to Giles Sutherland Rich, 76 PAT, TRADEMARK OFF. SOCIETY 332, 336-37 (1994) and ending with the sentence: “An interesting anecdote describing how the clerk of Justice Clark learned about that (Kettering) address from a patent law course taught by Tom Arnold” [and reiterated in amici briefs], appears in the book by Donald S. Chisum, PRINCIPLES OF PATENT LAW (1998) at (pages) 566-68.

The Graham decision was rendered in 1966 by Justice Tom Clark, whose law clerk was a former student of Adjunct Professor Tom Arnold at Houston Law School. Professor Arnold knew in advance of the impending clerkship and told the class urgently to read Judge Rich’s 1964 Kettering Award speech in preparing for the final exam of their patent class. Section 103 (along with much more of the 1952 Act) was the product of a drafting committee of Giles Rich, then a prominent New York patent lawyer, Tom Arnold, then a Justice Department lawyer and later, a prominent patent litigator in Texas, and Paul Rose, as in-house chief patent attorney of Union Carbide, all assisted by Henry Ashton of Fish, Richardson and Neave, the AIPLA President; and the revered Pasquale (Pat) J. Frederico, a USPTO policy leader and teacher to examiners and a virtual archaeologist of patent law. These hall-of-fame pioneers would approve the latest evolution trend now in progress for section 103 but would deplore the reappearance of the meaningless concept of inventiveness, (reformed in the 1952 act sections 103 and 112(b) as invention and in the 2011 America Invents Act as “claimed invention” to reinforce the 1952 intent) to pollute section 101 in recent years.

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Author: AnSim
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Join the Discussion

2 comments so far. Add my comment.

  • [Avatar for George]
    June 6, 2024 02:21 am

    Let’s just let AI decide if something is ‘obvious’ or not!

    That’s the only way (in the 21st century) to ensure fairness and consistency for all (rich or poor), including for companies like Apple and its ’round corners on cell phones’, Amazon and its ‘one click shopping’ patent and all the other ‘completely stupid’, trivial and obvious patents that they seem to be allowed ‘all the time’ (and aggressively enforced too). Another example being ‘time release’ drug capsules, that if an independent inventor had come up with, would have been immediately been denied, and given a swift kick in the ass along with that!

    It’s total ‘obvious’ that the entire concept of ‘obviousness’ should have been replaced a long time ago with ‘significance’, ‘novelty’, ‘utility’, ‘likely commercial value’ (not previously demonstrated), actual commercial value already demonstrated, the solving of previously unrecognized problems, etc., etc., instead of a ‘contrived hunch’ or ‘theoretical hindsight reconstruction’, that some magical POSITA(s) could have come up with but for some strange reason just ‘never got around to it’!

    We need to use criteria more similar to what the Noble Prize Committee uses to assess ‘significance’ and ‘novelty’ (which has seldom been questioned). For some reason they have never felt the need to call on lawyers or judges to help then decide who merits them awarding a $1M prize to each year! How is that possible, given how ‘extremely hard it is’ for the USPTO to make ‘similar decisions’ when it comes to patents, new products and new technologies? They are BOTH either significant (to any scientist or even lay person) or they’re not, but that is something that a computer (using ‘logical’ tests) could determine just as well.

    Humans are neither purely ‘logical’ or purely ‘objective’ when it comes to making such decisions. Someone might look at a zipper or a sewing machine and say “Yeah, OK, what’s the big deal, I could’ve come up with that too, if I had more time or wasn’t so lazy”! Except they never did and certainly never commercialized! BIG DIFFERENCE (at least for the economy and job creation)! An AI would justy apply a few simple ‘rules’ and ‘tests’ for ‘significance’ and issue an answer in MINUTES (not YEARS), along with a detailed explanation for it’s answer, without EVER having to appeal to any ‘mythical’ POSITA(s) (invented by ‘silly’ humans). A computer could even just use mathematics and statistics to decide and you can’t get better, more accurate, more consistent, or more objective than that!

    I would dare any human to match a computer in doing that or beating its ability to totally (and fairly) assess the significance, importance, or commercial value of a new invention, compared to prior inventions or even their combinations. Indeed, this now needs to be researched and proven out! Maybe my company will attempt to do that.

  • [Avatar for Pro Say]
    Pro Say
    June 5, 2024 04:00 pm

    One word: Fauxsita.

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