所屬技術領域中具有通常知識者一問 - 專利

針對此問題，重新翻一些資料後，將自己讀到內容整理，如下供大家參考。


Person of Ordinary Skill, not Inventor

Judge Rich made an important modification to his“inventor…working in his
shop” metaphor in Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 223
USPQ 603 (Fed. Cir. 1984), by making clear that it is the hypothetical person
of ordinary skill, not the inventor, that is in the shop. He proclaimed (id.
at 1454): “We hereby declare the presumption that the inventor has knowledge
of all material prior art to be dead.” By substituting the person or
ordinary skill, Judge Rich conformed his Winslow metaphor to the language of
’103.

於1984年以前，判斷可專利性的標準是以“發明人”為準，而不是以“具有通常技能者
”為準。在1984年的判決Kimberly-Clark v. Johnson & Johnson以及Winslow中，法官
Rich清楚地宣布，以“具有通常技能者”替代“發明人”。

Level of Ordinary Skill

The approach in Winslow shows one construct for hypothesizing the person of
ordinary skill in the art and the challenge facing that person. Is it fair to
charge the aspiring patentee with knowledge of all the analogous art by
endowing the artisan of ordinary skill with omniscience? Is it also fair to
assume that the hypothetical artisan was focused on solving the particular
problem on which the inventor was dealing? The presumption does simplify the
obviousness analysis by putting all inventors in the same position so that
duplicative invention is not permitted. In addition, perhaps the presumption
is a fair trade-off with the presumption that the hypothetical artisan has
only ordinary skill. Judge Hand recognized perhaps another trade-off:

在Winslow的學理方法中，顯示了“具有通常技能者”之虛擬人物的構想及他所面臨的挑
戰。藉由使“具有通常技能者”為全知者，來課予申請人應知道所有類似領域之知識的負
擔，是公平的嗎？藉由假定這個虛擬人物僅需具有通常技能，也許，這樣的假設會是一種
公平的權衡（trade-ff）。然而，法官Hand還指出另外一種權衡。

Perhaps it would be desirable that an inventor should not be charged with
acquaintance with all that the patent offices of this and every other country
contain, and with all that has ever been publicly sold or used in the United
States; although in that event it would be an inevitable corollary that
infringements should be limited to plagiarisms. With such considerations we
have nothing to do; as the law stands, the inventor must accept the position
of a mythically omniscient worker in his chosen field. As the arts
proliferate with prodigious fecundity, his lot is an increasingly hard one.
(Merit Mfg. Co. v. Hero Mfg. Co., 185 F.2d 350, 352, 87 USPQ 289, 291 (2d
Cir. 1950).)

也許最好的情況是，不應該課予發明人應熟悉本專利局及其他國家專利局所累積內容以
及應熟悉在美國公開販賣或使用之技術的負擔，即使在此情況下所造成的自然結果會是，
侵權僅能限於剽竊（難以舉證）。認知到此考量後，我們無能為力，在法律的角度，只能
要求發明人必須接受在他所選擇的領域中有著一虛構的全知者的角色。隨著技藝以巨大繁
殖能力急速地增殖，他的命運也愈來愈艱難。


在Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 696, 218 USPQ
865, 868 (Fed. Cir. 1983)的判決中，法官提供了決定具有通常技能者之水平的六個因
素：
(1) the educational level of the inventor
(2) the type of problems encountered in the art
(3) the prior solutions to those problems
(4) the rapidity with which inventions are made
(5) the sophistication of the technology
(6) the educational level of workers active in the field


若比對MPEP 2141.03 ，可以發現缺少了“ the educational level of the inventor”
的判斷因素。應該是1983年後的判決中，因應以“具有通常技能者”替代“發明人”的構
想，而將它刪除了。

MPEP 2141.03 Level of Ordinary Skill in the Art
The 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. Factors
that may be considered in determining the level of ordinary skill in the art
may include: (A) “type of problems encountered in the art;” (B) “prior art
solutions to those problems;” (C) “rapidity with which innovations are made;
” (D) “sophistication of the technology; and” (E) “educational level of
active workers in the field. In a given case, every factor may not be
present, and one or more factors may predominate.” In re GPAC, 57 F.3d 1573,
1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995); Custom Accessories, Inc. v.
Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir.
1986 ); Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 696, 218
USPQ 865, 868 (Fed. Cir. 1983).


112及103段落情況下的虛擬人物是相同的嗎？

The Person Skilled in the Art

Is the skilled artisan under section 112 the same hypothetical person as the
artisan of ordinary skill under section 103? In some ways he is, and in some
he is not. First, under section 103 the pertinent field of art is defined by
the problem to be solved, and the courts look for a person skilled in that
field. But does that mean one field of technology? Not necessarily. Remember
that we are talking about a hypothetical person, who may not actually exist.
One district court, in a section 103 context, found the pertinent fields to
be several, all of which the hypothetical person either had familiarity with,
or would be expected to consult with, someone who did. Likewise, under
section 112, the Court of Customs and Patent Appeals has suggested that an
invention directed to more than one field may be enabled by looking to the
knowledge of multiple specialists. For example, an invention that uses a
computer program to operate a structure in a novel way may be enabled by the
knowledge of both a computer programmer and an engineer in the appropriate
field. See In re Naquin, 398 F.2d 863, 158 USPQ 317 (CCPA 1968). Second,
under section 103, the artisan of ordinary skill is presumed to know about
all of the relevant prior art in the pertinent field. That presumption is
driven by the policy of imposing an absolute duty to research all of the
prior art so as to avoid duplicative inventive activity and overlapping
patents. In contrast, the policy behind section 112 is to make the invention
available to the public without requiring a detailed search. See 3 Donald S.
Chisum, Chisum on Patents § 7.03[2], at 7-28 to 7-29. Thus, in Webster Loom,
the Court endowed the artisan under section 112 with knowledge of “[t]hat
which is common and well known.” Hence, the omniscience of the hypothetical
person under section 103 does not carry over totally to section 112.


在某些情況下是，在某些情況下不是。

首先，在段落103下，所屬領域是欲解決的問題，而且可以為複數個領域。相同地，在段
落112下，一個發明也可以被導向多個領域，並且根據多種類專家的知識也致能多數的專
家。

第二，在段落103下，具有通常技能者被假設成知道所有類似領域之知識。這樣的假設是
政策導向，藉由課予申請人應檢索所有習知技術的負擔，避免相同的發明活動及重疊的發
明。相反地，在段落112下，是要讓發明在不需要仔細檢索的情況下能夠公開於公眾。因
此，在Webster Loom中，法院賦予段落112下的工匠具有common and well known的知識。

在102下也應該考慮到虛擬人物的技能水平，因為引用技術必需是known by persons of
ordinary skill，它的知識水平也是全知的。此外，在書面記載要件中，針對沈默的部分
，可以主張原說明書中已固有地、暗示地記載。而要作為102的引用文獻，也可以利用其
他文獻（全知的）舉證該引用文獻已固有地記載沈默的部分。判斷標準也是以persons
of ordinary skill為準。

在段落103下，分析習知技術時，虛擬人物除了全知外，也被賦予具有通常的創造能力。
此部分可以參照 MPEP 2131及2141.03。


2131 Anticipation — Application of 35 U.S.C. 102
Therefore, one of ordinary skill in the art would have known that “
commercial blood bags” meant bags containing DEHP. The claims were thus held
to be anticipated.
“To serve as an anticipation when the reference is silent about the asserted
inherent characteristic, such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in
the reference, and that it would be so recognized by persons of ordinary
skill.”
(“how one of ordinary skill in the art would understand the relative size
of a genus or species in a particular technology is of critical importance”)
Patentee described claimed temperature range as “critical” to enable the
process to operate effectively, and showed that one of ordinary skill would
have expected the synthesis process to operate differently outside the
claimed range.

MPEP 2141.03
“A person of ordinary skill in the art is also a person of ordinary
creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
421, 82 USPQ2d 1385, 1397 (2007).

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