In re Hall (JWB)

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The Case

  • Appeal from decision of PTO Board of Appeals, which sustained a final rejection of claims 1-25 of an application filed Jan 29, 1982, based on a “printed publication” bar under Section 102 (referenced a doctoral thesis)
  • If printed more than one year prior to application date  statutory bar
  • Issue of whether thesis is available as a such a printed publication


  • Sept 1977 Foldi submitted dissertation to Dept of Chemistry and Pharmacy at Freiburg University (Germany)
  • Nov 2, 1977 Foldi awarded doctorate degree
  • Dec 1977 copies of dissertation made available to faculty and students of Freiburg University and to general public
  • Feb 27, 1979 effective filing date for Hall


  • Relying on the library’s affidavit, the board held that the unrebutted evidence of record was sufficient to conclude that the Foldi dissertation had an effective date as prior art more than one year prior to the filing date of the appellant's initial application

Class Notes

  • Section 102(b) if invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the date of US application
  • Doctoral dissertation from German university, printed and public in the library of the university, is considered “printed publication” under 102 (not hidden, in the public domain)
    • freely made available to the faculty and student body of Freiburg University as well as to the general public”
    • sufficiently accessible, at least to the public interested in the art, so that such a one by examining the reference could make the claimed invention” i.e. it has to disclose what is being invented by patent applicant