Difference between revisions of "Talk:In re Hall, 781 F.2d 897 (1986)"

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(Created page with '==Courtney== This is an appeal from the decision of the U.S. Patent and Trademark Office's (PTO) former Board of Appeals, adhered to on reconsideration by the Board of Patent Ap…')
 
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We agree with the board that the evidence of record consisting of Dr. Will's affidavits establishes a prima facie case for unpatentability of the claims under the Sec. 102(b) publication bar. It is a case which stands unrebutted. 27
 
We agree with the board that the evidence of record consisting of Dr. Will's affidavits establishes a prima facie case for unpatentability of the claims under the Sec. 102(b) publication bar. It is a case which stands unrebutted. 27
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== Maura ==
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The reference is a doctoral thesis. Because appellant concedes that his claims are unpatentable if the thesis is available as a "printed publication" more than one year prior to the application's effective filing date of February 27, 1979, the only issue is whether the thesis is available as such a printed publication.
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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. In rejecting appellant's argument that the evidence was not sufficient to establish a specific date when the dissertation became publicly available, the board said: 12
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We rely on the librarian's affidavit of express facts regarding the specific dissertation of interest and his description of the routine treatment of dissertations in general, in the ordinary course of business in his library. 13
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On appeal, appellant raises two arguments: (1) the Sec. 102(b) "printed publication" bar requires that the publication be accessible to the interested public, but there is no evidence that the dissertation was properly indexed in the library catalog prior to the critical date; and (2) even if the Foldi thesis were cataloged prior to the critical date, the presence of a single cataloged thesis in one university library does not constitute sufficient accessibility of the publication's teachings to those interested in the art exercising reasonable diligence.
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The "printed publication" bar is found in 35 U.S.C. Sec. 102: 15 A person shall be entitled to a patent unless-- 16
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(b) the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States.... 19
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The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. In re Bayer, 568 F.2d 1357, 1361, 196 USPQ 670, 675 (CCPA 1978). 20
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The statutory phrase "printed publication" has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination. In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981). Because there are many ways in which a reference may be disseminated to the interested public, "public accessibility" has been called the touchstone in determining whether a reference constitutes a "printed publication" bar under 35 U.S.C. Sec. 102(b). See, e.g., In re Bayer, 568 F.2d at 1359, 196 USPQ at 673; In re Wyer, 655 F.2d at 224, 210 USPQ at 792. The Sec. 102 publication bar is a legal determination based on underlying fact issues, and therefore must be approached on a case-by-case basis.
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Based on what we have already said concerning "public accessibility," and noting that the determination rests on the facts of each case, we reject appellant's legal argument that a single cataloged thesis in one university library does not constitute sufficient accessibility to those interested in the art exercising reasonable diligence. 26

Revision as of 15:32, 31 January 2010

Courtney

This is an appeal from the decision of the U.S. Patent and Trademark Office's (PTO) former Board of Appeals, adhered to on reconsideration by the Board of Patent Appeals and Interferences (board), sustaining the final rejection of claims 1-25 of reissue Application No. 343,922, filed January 29, 1982, based principally on a "printed publication" bar under 35 U.S.C. Secs. 102(b). The reference is a doctoral thesis. Because appellant concedes that his claims are unpatentable if the thesis is available as a "printed publication" more than one year prior to the application's effective filing date of February 27, 1979, the only issue is whether the thesis is available as such a printed publication. On the record before us, we affirm the board's decision.

The record indicates that in September 1977, Foldi submitted his dissertation to the Department of Chemistry and Pharmacy at Freiburg University in the Federal Republic of Germany, and that Foldi was awarded a doctorate degree on November 2, 1977. 3

The "printed publication" bar is found in 35 U.S.C. Sec. 102: 15

A person shall be entitled to a patent unless-- 16

   * * * 

17

   * * * 

18

(b) the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States.... 19

The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. In re Bayer, 568 F.2d 1357, 1361, 196 USPQ 670, 675 (CCPA 1978). 20

Based on what we have already said concerning "public accessibility," and noting that the determination rests on the facts of each case, we reject appellant's legal argument that a single cataloged thesis in one university library does not constitute sufficient accessibility to those interested in the art exercising reasonable diligence. 26

We agree with the board that the evidence of record consisting of Dr. Will's affidavits establishes a prima facie case for unpatentability of the claims under the Sec. 102(b) publication bar. It is a case which stands unrebutted. 27

Maura

The reference is a doctoral thesis. Because appellant concedes that his claims are unpatentable if the thesis is available as a "printed publication" more than one year prior to the application's effective filing date of February 27, 1979, the only issue is whether the thesis is available as such a printed publication.

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. In rejecting appellant's argument that the evidence was not sufficient to establish a specific date when the dissertation became publicly available, the board said: 12 We rely on the librarian's affidavit of express facts regarding the specific dissertation of interest and his description of the routine treatment of dissertations in general, in the ordinary course of business in his library. 13 On appeal, appellant raises two arguments: (1) the Sec. 102(b) "printed publication" bar requires that the publication be accessible to the interested public, but there is no evidence that the dissertation was properly indexed in the library catalog prior to the critical date; and (2) even if the Foldi thesis were cataloged prior to the critical date, the presence of a single cataloged thesis in one university library does not constitute sufficient accessibility of the publication's teachings to those interested in the art exercising reasonable diligence.

The "printed publication" bar is found in 35 U.S.C. Sec. 102: 15 A person shall be entitled to a patent unless-- 16 17 18

(b) the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States.... 19

The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. In re Bayer, 568 F.2d 1357, 1361, 196 USPQ 670, 675 (CCPA 1978). 20 The statutory phrase "printed publication" has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination. In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981). Because there are many ways in which a reference may be disseminated to the interested public, "public accessibility" has been called the touchstone in determining whether a reference constitutes a "printed publication" bar under 35 U.S.C. Sec. 102(b). See, e.g., In re Bayer, 568 F.2d at 1359, 196 USPQ at 673; In re Wyer, 655 F.2d at 224, 210 USPQ at 792. The Sec. 102 publication bar is a legal determination based on underlying fact issues, and therefore must be approached on a case-by-case basis.

Based on what we have already said concerning "public accessibility," and noting that the determination rests on the facts of each case, we reject appellant's legal argument that a single cataloged thesis in one university library does not constitute sufficient accessibility to those interested in the art exercising reasonable diligence. 26