In re Wyer

• Decision Date: 01 October 1981
• Docket Number: No. 81-528.,81-528.
• Citation: 655 F.2d 221
• Parties: In re Joseph Richard WYER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

655 F.2d 221

In re Joseph Richard WYER.

No. 81-528.

United States Court of Customs and Patent Appeals.

July 30, 1981.

Rehearing Denied October 1, 1981.

John Smith-Hill, Lester Horwitz and Roger S. Thompson, New York City, for appellant.

Joseph F. Nakamura, Sol. and Jere W. Sears, Deputy Sol., Washington, D. C., of counsel for Patent and Trademark Office.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.

RICH, Judge.

This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) sustaining the examiner's rejection of all claims under 35 U.S.C. § 102(b),¹ on the ground that applicant's invention was described in a printed publication in a foreign country more than one year prior to the U.S. filing date of his application serial No. 740,343, filed November 9, 1976, for a patent on a "Cable Junction Box." We affirm.

Background²

This appeal was heard on an agreed statement of the case, pursuant to CCPA Rule 5.5, which presents the following facts. On March 13, 1972, appellant filed Australian Patent Application No. PA 8273 accompanied by a provisional specification, that is, one without claims. On February 28, 1973, appellant filed a specification with claims and on August 29, 1974, more than two years before filing of the application at bar, the entire application, renumbered as patent application 52,691/73, was laid open to public inspection by the Australian Patent Office and a printed abstract thereof was published. The disclosure of the instant U.S. application corresponds to that of the Australian application.

Involved here are: (1) a microfilm copy of the Australian application preserved in the Australian Patent Office as a security reel, (2) a microfilm copy of the application that is cut up and used to make diazo copies, and (3) the diazo copies. Appellant explained further in his brief before the board:

Information which has recently been received shows that at the time in question in the case namely August 29, 1974 when the Abstract of the corresponding Australian application was published, it was the practice of the Australian Patent Office to produce two microfilm copies of each specification. These copies were made on 16 mm film, with each frame corresponding to a page of the specification. One of the microfilm copies was retained in the Patent Office as a security reel, to provide a permanent record of the specification, while the second copy was cut into strips of up to six frames and up to six strips were placed within a transparent jacket. By selecting the number of frames of each strip, and the number of strips in each jacket, the microfilm frames of each specification were placed in one or more jackets, and each jacket contained the microfilm frames pertaining to only one application.

The transparent jackets containing these strips of the second microfilm copy were than sic used to produce diazo copies, each copy being a photograph of up to 36 microfilm frames * * *.

Six of these diazo copies were produced, one being retained at the Australian Patent Office and the other five being distributed to the sub-offices respectively. (It has been learned that there are five of these suboffices not six as indicated in the brief filed August 30, 1978.) The second microfilm copy (cut in strips placed within transparent jackets) was also retained in the Australian Patent Office to permit production of further diazo copies should the need arise, as explained below.

Equipment was available to the public in the Patent Office and in the sub-offices for providing an enlarged reproduction of the diazo copies on a display screen. Equipment was also available for producing enlarged paper copies for purchase by the public. Moreover, diazo copies were also available for sale to the public upon application to the Australian Patent Office, these latter diazo copies being produced to order from the second microfilm copy, as mentioned above.

Issue

The sole issue is whether what occurred in the Australian Patent Office resulted in the production of a "printed publication" within the meaning of 35 U.S.C. § 102(b).

The Board Opinion

The board began its opinion by stating that to be a printed publication "the document must, of course, have been both `printed' and `published'," citing In re Tenney, 45 CCPA 894, 254 F.2d 619, 117 USPQ 348 (1958). With respect to what it termed the "`printed' requirement," it stated that although Tenney held otherwise, the "trend seems to be that a microfilm is `printed'." In support of this proposition the board cited the leading cases of Philips Electronic & Pharmaceutical Industries Corp. v. Thermal & Electronics Industries, Inc., 450 F.2d 1164, 171 USPQ 641 (3d Cir. 1971), and I.C.E. Corp. v. Armco Steel Corp., 250 F.Supp. 738, 148 USPQ 537 (S.D.N.Y.1966). Noting the procedure followed in the Australian Patent Office, the board disposed of the first requirement, saying:

We fail to see any difference in dissemination probability in reproducing a copy of a document from the microfilm upon request on the one hand and in reproducing a number of copies from the microfilm and storing them on a shelf for distribution upon request on the other hand. * * *.

In any event, * * * copies were reproduced from the microfilm * * * and these six diazo copies constitute evidence that copies were in fact made from the microfilm of the Australian application.

Accordingly, we find that the microfilm of the Australian application meets the "printed" requirement.

Turning to the "publication" requirement, the board noted that the touchstone is public accessibility and resolved the question in the following manner:

Here, the Australian application was accessible to the public as of August 29, 1974. An Abstract, claim 1 of the application, was published at that time. The application was classified, and the Abstract was arranged with other Abstracts according to this classification system. No question has been raised as to the propriety of the classification. A copy of the entire Australian application was available upon request using microfilm reproduction equipment. Under these circumstances, which occurred as of August 29, 1974, we are convinced that the invention was readily accessible to that part of the public most concerned with it and, therefore, there was a "publication."

Although the board recognized that there exists a line of cases which hold that a patent application open to the public in a patent office is not a "printed publication," it stated that, "the provision of a microfilm of the application together with the availability of equipment for making copies from the microfilm increases the probability that the document will be widely circulated." Furthermore, said the board,

An additional factor is that the diazo copies of the Australian application are kept in the Australian Patent Office and its branches. A patent office is the repository of inventions and the place where the artisan would turn for solutions for problems. What better place is there to store information to enhance the probability of its wide circulation?

In conclusion, the board stated:

We think that the time has come to hold that a microfilm of a foreign patent application maintained in the foreign patent office, accessible to the pertinent part of the public and available for duplication is a "printed publication" as of its date of accessibility, and we so hold.

Upon appellant's request for reconsideration of its decision, the board stated that it regarded both the cut up original microfilm copy and any one of the diazo copies as a "printed publication." The microfilm copy preserved as a security reel in the Australian Patent Office was not mentioned.

Arguments On Appeal

Appellant presents different arguments regarding the application of § 102(b) depending upon the type of copy involved. He argues that the microfilm copy that is cut up is used to make numerous identical copies and is, therefore, no more "printed" than is a lithographer's plate or a mimeograph stencil. Since the film is kept in the patent office and used only for official purposes, he further argues that it cannot be considered a "publication" because there is no public access to it. Additionally, although he contends that by the board's failure to discuss the microfilm copy preserved as a security reel in the patent office in its response to his request for reconsideration, it has impliedly agreed that it is not a printed publication, he asserts that the above arguments regarding the cut-up copy apply with equal force to the security copy.

With regard to the diazo copies, appellant states that a microfilm copy available to the public for reproduction is not "printed," that only the copies made therefrom are. He urges that "To hold otherwise, would result in any legible document that is accessible to the public being regarded as a printed publication (e. g., the original Declaration of Independence), since an unlimited number of copies of the document could be reproduced by modern xerographic or photographic techniques." Further, it is asserted that because only seven copies were in fact produced and only with the intention that they not be circulated to the public but held within the patent office and its branches, they cannot be regarded as "printed."

Since publication implies not only access, it is argued, but activity in distributing the document to the public, appellant submits that the diazo copies also do not meet the "publication" requirement. The distinction, he states, is between a copy of a document reproduced in advance, so as to be immediately available for distribution, and one reproduced only upon request. In this case the diazo copies were not circulated but were maintained in the patent office and its branches.

Appellant also asserts that it is well-settled that a foreign patent application laid open to public inspection is not a printed publication,...