03-1583
(Serial No. 09/699,950)
IN RE CARL F. KLOPFENSTEIN and JOHN L. BRENT, JR.
John M. Collins, Hovey
Williams LLP, of Kansas City, Missouri, argued for appellants. With him on the brief was Jill D. Singer. Of counsel was Gregory J. Skoch.
Henry G. Sawtelle,
Associate Solicitor, United States Patent and Trademark Office, of Arlington,
Virginia, argued for appellee. With him
on the brief were John M. Whealan, Solicitor and Heather F. Auyang,
Associate Solicitor.
Appealed from: United
States Patent and Trademark Office,
Board
of Patent Appeals and Interferences
03-1583
(Serial No. 09/699,950)
IN RE CAROL F. KLOPFENSTEIN and JOHN L. BRENT, JR.
__________________________
DECIDED: August 18, 2004
__________________________
Before MICHEL,
SCHALL, and PROST, Circuit Judges.
PROST, Circuit
Judge.
Carol Klopfenstein and John Brent appeal a decision from the Patent and Trademark Office’s Board of Patent Appeals and Interferences (“Board”) upholding the denial of their patent application. The Board upheld the Patent and Trademark Office’s (“PTO’s”) initial denial of their application on the ground that the invention described in the patent application was not novel under 35 U.S.C. § 102(b) because it had already been described in a printed publication more than one year before the date of the patent application. We affirm.
BACKGROUND
A.
The
appellants applied for a patent on October 30, 2000. Their patent application, Patent Application Serial No.
09/699,950 (“the ’950 application”), discloses methods of preparing foods
comprising extruded soy cotyledon fiber (“SCF”). The ’950 application asserts that feeding mammals foods
containing extruded SCF may help lower their serum cholesterol levels while
raising HDL cholesterol levels. The
fact that extrusion reduces cholesterol levels was already known by those of
ordinary skill in the art that worked with SCF. What was not known at the time was that double extrusion
increases this effect and yielded even stronger results.
In
October 1998, the appellants, along with colleague M. Liu, presented a printed
slide presentation (“Liu” or “the Liu reference”) entitled “Enhancement of
Cholesterol-Lowering Activity of Dietary Fibers By Extrusion Processing” at a
meeting of the American Association of Cereal Chemists (“AACC”). The fourteen-slide presentation was printed
and pasted onto poster boards. The
printed slide presentation was displayed continuously for two and a half days
at the AACC meeting.
In November
of that same year, the same slide presentation was put on display for less than
a day at an Agriculture Experiment Station (“AES”) at Kansas State
University.
Both
parties agree that the Liu reference presented to the AACC and at the AES in
1998 disclosed every limitation of the invention disclosed in the ’950 patent
application. Furthermore, at neither
presentation was there a disclaimer or notice to the intended audience
prohibiting note-taking or copying of the presentation. Finally, no copies of the presentation were
disseminated either at the AACC meeting or at the AES, and the presentation was
never catalogued or indexed in any library or database.
B.
On October 24, 2001, nearly one year after its filing, the
’950 patent application was rejected by the PTO examiner. The examiner found all of the application’s
claims anticipated by the Liu reference or obvious in view of Liu and other
references. Shortly thereafter, the
appellants amended the claims of the ’950 patent and described the
circumstances under which the Liu reference had been displayed to the AACC and
at the AES. The appellants argued that
the Liu reference was not a “printed publication” because no copies were
distributed and because there was no evidence that the reference was
photographed. The examiner rejected
these arguments and issued a final office action on April 10, 2002 rejecting
the claims of the ’950 application. The
appellants then appealed to the Board.
Before the Board, the appellants again advanced their
argument that the lack of distribution and lack of evidence of copying
precluded the Liu reference from being considered a “printed publication.” The appellants further contended that the Liu
reference was also not a “printed publication” because it was not catalogued or
indexed in any library or database. The
Board rejected the appellants’ arguments and affirmed the decision of the PTO
examiner, finding the Liu reference to be a “printed publication.” The Board affirmed on the grounds that the
full invention of the ’950 application was made publicly accessible to those of
ordinary skill in the art by the Liu reference and that this introduction into
the public domain of disclosed material via printed display represented a
“printed publication” under 35 U.S.C. § 102(b).
The appellants have appealed the Board’s decision to this
court. We have jurisdiction to hear
this appeal under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
A.
Where no
facts are in dispute, the question of whether a reference represents a “printed
publication” is a question of law. In
re Cronyn, 890 F.2d 1158, 1159 (Fed. Cir. 1989). Questions of law appealed from a Board decision are reviewed de
novo. In re Bass, 314 F.3d 575,
576 (Fed. Cir. 2002).
The only
question in this appeal is whether the Liu reference constitutes a “printed
publication” for the purposes of 35 U.S.C. § 102(b). As there are no factual disputes between the
parties in this appeal, the legal issue of whether the Liu reference is a
“printed publication” will be reviewed de novo.
B.
The
appellants argue on appeal that the key to establishing whether or not a
reference constitutes a “printed publication” lies in determining whether or
not it had been disseminated by the distribution of reproductions or copies
and/or indexed in a library or database.
They assert that because the Liu reference was not distributed and
indexed, it cannot count as a “printed publication” for the purposes of 35
U.S.C. § 102(b). To support their
argument, they rely on several precedents from this court and our predecessor
court on “printed publications.”[1] They argue that In re Cronyn, In
re Hall, 781 F.2d 897 (Fed. Cir. 1986), Massachusetts Institute of
Technology v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985) (“MIT”), and
In re Wyer, 655 F.2d 221 (CCPA 1981), among other cases, all support the
view that distribution and/or indexing is required for something to be
considered a “printed publication.”[2]
We find the
appellants’ argument unconvincing and disagree with their characterization of
our controlling precedent. Even if the
cases cited by the appellants relied on inquiries into distribution and
indexing to reach their holdings, they do not limit this court to finding
something to be a “printed publication” only when there is distribution
and/or indexing. Indeed, the key
inquiry is whether or not a reference has been made “publicly accessible.” As we have previously stated,
The statutory phrase “printed publication” has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was “published.”
In re Cronyn,
890 F.2d at 1160 (quoting Constant v. Advanced Micro-Devices, Inc., 848
F.2d 1560, 1568 (Fed. Cir. 1988)).[3] For example, a public billboard targeted to
those of ordinary skill in the art that describes all of the limitations of an
invention and that is on display for the public for months may be neither
“distributed” nor “indexed”—but it most surely is “sufficiently accessible to
the public interested in the art” and therefore, under controlling precedent, a
“printed publication.” Thus, the
appellants’ argument that “distribution and/or indexing” are the key components
to a “printed publication” inquiry fails to properly reflect what our precedent
stands for.
Furthermore,
the cases that the appellants rely on can be clearly distinguished from this
case. Cronyn involved college
students’ presentations of their undergraduate theses to a defense committee
made up of four faculty members. Their
theses were later catalogued in an index in the college’s main library. The index was made up of thousands of
individual cards that contained only a student’s name and the title of his or
her thesis. The index was searchable by
student name and the actual theses themselves were neither included in the
index nor made publicly accessible. We
held that because the theses were only presented to a handful of faculty
members and “had not been cataloged [sic] or indexed in a meaningful way,” they
were not sufficiently publicly accessible for the purposes of 35 U.S.C.
§ 102(b). In re Cronyn, 890
F.2d at 1161.
In Hall,
this court determined that a thesis filed and indexed in a university library
did count as a “printed publication.”
The Hall court arrived at its holding after taking into account
that copies of the indexed thesis itself were made freely available to the
general public by the university more than one year before the filing of the
relevant patent application in that case.
But the court in Hall did not rest its holding merely on the
indexing of the thesis in question.
Instead, it used indexing as a factor in determining “public
accessibility.” As the court asserted:
The [“printed publication”] bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. . . . 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. § 102(b).
In re Hall,
781 F.2d at 898-99.
In MIT,
a paper delivered orally to the First International Cell Culture Congress was
considered a “printed publication.” In
that case, as many as 500 persons having ordinary skill in the art heard the
presentation, and at least six copies of the paper were distributed. The key to the court’s finding was that
actual copies of the presentation were distributed. The court did not consider the issue of indexing. The MIT court determined the paper in
question to be a “printed publication” but did not limit future determinations
of the applicability of the “printed publication” bar to instances in which
copies of a reference were actually offered for distribution. MIT, 774 F.2d at 1108-10.[4]
Finally,
the Wyer court determined that an Australian patent application kept on
microfilm at the Australian Patent Office was “sufficiently accessible to the
public and to persons skilled in the pertinent art to qualify as a ‘printed
publication.’” In re Wyer, 655
F.2d at 226. The court so found even
though it did not determine whether or not there was “actual viewing or
dissemination” of the patent application.
Id. It was sufficient for
the court’s purposes that the records of the application were kept so that they
could be accessible to the public. Id.[5] According to the Wyer court, the
entire purpose of the “printed publication” bar was to “prevent withdrawal” of
disclosures “already in the possession of the public” by the issuance of a
patent. Id.
Thus, throughout
our case law, public accessibility has been the criterion by which a prior art
reference will be judged for the purposes of § 102(b). Oftentimes courts have found it helpful to
rely on distribution and indexing as proxies for public accessibility. But when they have done so, it has not been
to the exclusion of all other measures of public accessibility. In other words, distribution and indexing
are not the only factors to be considered in a § 102(b) “printed
publication” inquiry.
C.
The determination
of whether a reference is a “printed publication” under 35 U.S.C. § 102(b)
involves a case-by-case inquiry into the facts and circumstances surrounding
the reference’s disclosure to members of the public. In re Cronyn, 890 F.2d at 1161; In re Hall, 781
F.2d at 899. Accordingly, our analysis
must begin with the facts of this case, none of which are in dispute.
In this
case, the Liu reference was displayed to the public approximately two years
before the ’950 application filing date.
The reference was shown to a wide variety of viewers, a large subsection
of whom possessed ordinary skill in the art of cereal chemistry and
agriculture. Furthermore, the reference
was prominently displayed for approximately three cumulative days at AACC and
the AES at Kansas State University. The
reference was shown with no stated expectation that the information would not
be copied or reproduced by those viewing it.
Finally, no copies of the Liu display were distributed to the public and
the display was not later indexed in any database, catalog or library.
Given that
the Liu reference was never distributed to the public and was never indexed, we
must consider several factors relevant to the facts of this case before
determining whether or not it was sufficiently publicly accessible in order to
be considered a “printed publication” under § 102(b). These factors aid in resolving whether or
not a temporarily displayed reference that was neither distributed nor indexed
was nonetheless made sufficiently publicly accessible to count as a “printed
publication” under § 102(b). The
factors relevant to the facts of this case are: the length of time the display was exhibited, the expertise of
the target audience, the existence (or lack thereof) of reasonable expectations
that the material displayed would not be copied, and the simplicity or ease
with which the material displayed could have been copied. Only after considering and balancing these
factors can we determine whether or not the Liu reference was sufficiently publicly
accessible to be a “printed publication” under § 102(b).
The
duration of the display is important in determining the opportunity of the
public in capturing, processing and retaining the information conveyed by the
reference. The more transient the
display, the less likely it is to be considered a “printed publication.” See, e.g., Howmedica, 530 F.
Supp. at 860 (holding that a presentation of lecture slides that was of limited
duration was insufficient to make the slides “printed publications” under § 102(b)). Conversely, the longer a reference is
displayed, the more likely it is to be considered a “printed publication.” In this case, the Liu reference was
displayed for a total of approximately three days. It was shown at the AACC meeting for approximately two and a half
days and at the AES at Kansas State University for less than one day.
The
expertise of the intended audience can help determine how easily those who
viewed it could retain the displayed material.
As Judge Learned Hand explained in Jockmus v. Leviton, 28 F.2d
812, 813-14 (2d Cir. 1928), a reference, “however ephemeral its existence,” may
be a “printed publication” if it “goes direct to those whose interests make
them likely to observe and remember whatever it may contain that is new and
useful.” In this case, the intended
target audience at the AACC meeting was comprised of cereal chemists and others
having ordinary skill in the art of the ’950 patent application. The intended viewers at the AES most likely
also possessed ordinary skill in the art.
Whether a
party has a reasonable expectation that the information it displays to the
public will not be copied aids our § 102(b) inquiry. Where professional and behavioral norms
entitle a party to a reasonable expectation that the information displayed will
not be copied, we are more reluctant to find something a “printed
publication.” This reluctance helps
preserve the incentive for inventors to participate in academic presentations
or discussions. Where parties have
taken steps to prevent the public from copying temporarily posted information,
the opportunity for others to appropriate that information and assure its
widespread public accessibility is reduced.
These protective measures could include license agreements,
non-disclosure agreements, anti-copying software or even a simple disclaimer
informing members of the viewing public that no copying of the information will
be allowed or countenanced. Protective
measures are to be considered insofar as they create a reasonable expectation
on the part of the inventor that the displayed information will not be
copied. In this case, the appellants
took no measures to protect the information they displayed—nor did the
professional norms under which they were displaying their information entitle
them to a reasonable expectation that their display would not be copied. There was no disclaimer discouraging
copying, and any viewer was free to take notes from the Liu reference or even
to photograph it outright.
Finally,
the ease or simplicity with which a display could be copied gives further
guidance to our § 102(b) inquiry.
The more complex a display, the more difficult it will be for members of
the public to effectively capture its information. The simpler a display is, the more likely members of the public
could learn it by rote or take notes adequate enough for later
reproduction. The Liu reference was
made up of 14 separate slides. One
slide was a title slide; one was an acknowledgement slide; and four others
represented graphs and charts of experiment results. The other eight slides contained information presented in bullet
point format, with no more than three bullet points to a slide. Further, no bullet point was longer than two
concise sentences. Finally, as noted
earlier, the fact that extrusion lowers cholesterol levels was already known by
those who worked with SCF. The discovery
disclosed in the Liu reference was that double extrusion increases this
effect. As a result, most of the eight
substantive slides only recited what had already been known in the field, and
only a few slides presented would have needed to have been copied by an
observer to capture the novel information presented by the slides.
Upon
reviewing the above factors, it becomes clear that the Liu reference was
sufficiently publicly accessible to count as a “printed publication” for the
purposes of 35 U.S.C. § 102(b).
The reference itself was shown for an extended period of time to members
of the public having ordinary skill in the art of the invention behind the ’950
patent application. Those members of
the public were not precluded from taking notes or even photographs of the
reference. And the reference itself was
presented in such a way that copying of the information it contained would have
been a relatively simple undertaking for those to whom it was
exposed—particularly given the amount of time they had to copy the information
and the lack of any restrictions on their copying of the information. For these reasons, we conclude that the Liu
reference was made sufficiently publicly accessible to count as a “printed
publication” under § 102(b).
CONCLUSION
For the
aforementioned reasons, the decision of the Board is affirmed.
AFFIRMED
[1] In their brief, the appellants note that there is scant legislative history to guide us in determining the meaning of the term “printed publication.” Accordingly, and rightfully, they have based the bulk of their argument on the controlling precedent of this court and its predecessor court.
[2] Appellants acknowledge that our
precedent considers the term “printed publication” to be a unitary concept that
may not correspond exactly to what the term “printed publication” meant when it
was introduced into the patent statutes in 1836. In re Wyer, 655 F.2d at 226. Indeed, the question to be resolved in a “printed publication”
inquiry is the extent of the reference’s “accessibility to at least the
pertinent part of the public, of a perceptible description of the invention, in
whatever form it may have been recorded.”
Id.
[3] While the Cronyn court held “dissemination” to be necessary to finding something to be a “printed publication”, the court there used the word “disseminate” in its literal sense, i.e. “make widespread” or “to foster general knowledge of.” Webster’s Third New International Dictionary 656 (1993). The court did not use the word in the narrower sense the appellants have employed it, which requires distribution of reproductions or photocopies.
[4] With regard to scientific presentations, it is important to note than an entirely oral presentation at a scientific conference that includes neither slides nor copies of the presentation is without question not a “printed publication” for the purposes of 35 U.S.C. § 102(b). Furthermore, a presentation that includes a transient display of slides is likewise not necessarily a “printed publication.” See, e.g., Regents of the Univ. of Cal. v. Howmedica, Inc., 530 F. Supp. 846, 860 (D.N.J. 1981) (holding that “the projection of slides at the lecture [that] was limited in duration and could not disclose the invention to the extent necessary to enable a person of ordinary skill in the art to make or use the invention” was not a “printed publication”), aff’d, 676 F.2d 687 (3d Cir. 1982) (unpublished table decision). While Howmedica is not binding on this court, it stands for the important proposition that the mere presentation of slides accompanying an oral presentation at a professional conference is not per se a “printed publication” for the purposes of § 102(b).
[5] Unlike in Cronyn, it was the actual patent application—and not just an index card searchable by author name only—that was made publicly accessible.