In re Klopfenstein

• Decision Date: 18 August 2004
• Docket Number: No. 03-1583.,03-1583.
• Citation: 380 F.3d 1345
• Parties: In re Carol F. KLOPFENSTEIN and John L. Brent, Jr.
• Court: U.S. Court of Appeals — Federal Circuit

380 F.3d 1345

In re Carol F. KLOPFENSTEIN and John L. Brent, Jr.

No. 03-1583.

United States Court of Appeals, Federal Circuit.

DECIDED: August 18, 2004.

Appeal from the Patent and Trademark Office.

John M. Collins, Hovey Williams LLP, of Kansas City, MO, 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, VA, argued for appellee. With him on the brief were John M. Whealan, Solicitor and Heather F. Auyang, Associate Solicitor.

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...