Talk:In re Hall, 781 F.2d 897 (1986)

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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

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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

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