In this Appeal from the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (“the Board”), Dr. Richard Lister takes another shot at removing, as prior art, a reference cited by the Examiner in rejecting claims 21-25 of his application under 35 U.S.C. § 102(b). The Board found that the reference was publicly accessible more than a year prior to Dr. Lister’s application date.

Dr. Lister argued before the Federal Circuit that since the reference was not publicly accessible, it did not qualify as a printed publication within the meaning of § 102. Dr. Lister also argued that even if it was publicly accessible, sufficient evidence did not exist to show that the reference was publicly accessible for more than a year prior to the date of Dr. Lister’s application for patent.

The Federal Circuit addresses each of these issues in turn and finds that although the reference was made publicly accessible, there was insufficient evidence as to when the reference was publicly accessible sufficient for a rejection under 35 U.S.C. §102.

Dr. Lister conceived a new and improved way of playing golf in which golfers would be permitted to tee up their balls on every shot except for those shots taken from designated hazard areas (e.g., sand traps) or the putting green. In order to protect his idea, Dr. Lister described his method in a manuscript entitled “Advanced Handicap Alternatives for Golf” (“the Lister manuscript”) and submitted it to the United States Copyright Office (“the Copyright Office”) on July 4, 1994. Later, Dr. Lister decided to obtain a patent in order to protect his invention. On August 5, 1996, he filed an application with the United States Patent and Trademark Office (“USPTO”).

The Lister manuscript, now the reference in question on Appeal, was cited in a final rejection issued on January 31, 2003. Thus, the Federal Circuit focused on the extent the Lister manuscript was made available to the public by the Copyright Office.

35 U.S.C. § 102(b) is a bar to patentability if “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b). “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 Hall, 781 F.2d 897, 898 (Fed. Cir. 1986).

To qualify as a printed publication under § 102, a reference “must have been sufficiently accessible to the public interested in the art.” In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (quoting Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988)). Whether a reference is publicly accessible is determined on a case-by-case basis based on the “facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Thus, it was necessary to review the facts and circumstances surrounding the publication of the reference in question in this Appeal to determine if and when the reference qualifies as a printed publication within the meaning of § 102.

In the past, to determine whether a reference was publicly accessible, the Federal Circuit considered whether research tools were available that would have been sufficient to permit an interested researcher to locate and examine the reference.

For example, a dissertation shelved in the stacks and indexed in a catalog at Freiburg University in Germany was found to be a printed publication.

See Hall, 781 F.2d at 898.

However, in order for a cataloged or indexed document to be considered publicly accessible, it must be cataloged or indexed in a “meaningful way” that would permit a researcher to locate it. See Cronyn, 890 F.2d at 1161.

Dr. Lister argued that the difficulty surrounding the circumstances of accessing the Lister manuscript effectively made the Lister manuscript unavailable to the public. Specifically, he argued that the burden of traveling to the Copyright Office in Washington, D.C. and navigating “cumbersome procedures” to access the document essentially made the document unavailable to the public.

The Federal Circuit dismissed this rationale, stating that despite these purported difficulties, any member of the public is capable of accessing the Lister manuscript. The court noted that a reference can be considered publicly accessible even if gaining access to it might require a significant amount of travel. See Hall, 781 F.2d at 899-900. Furthermore, once accessibility is shown, it is unnecessary to show that anyone actually inspected the reference.

Documents registered at the Copyright Office are made available through the Copyright Office’s automated catalog and two commercial databases, Westlaw and Dialog. The automated catalog was not sorted by subject matter and could only be searched by either the author’s last name or the first word of the title of the work. The Federal Circuit found that the Copyright Office’s automated database was not indexed in a “meaningful way”, and thus, alone would have been insufficient to support a finding of public accessibility.

In addition, Westlaw and Dialog obtained the automated catalog data from the Copyright Office and entered it into their own databases.

Users of the Westlaw and Dialog databases could perform keyword searches of the titles, but not the full texts, of the works. As a reasonably diligent researcher could have searched and located the Lister manuscript on these commercial databases, the Federal Circuit found that the Lister manuscript was publicly accessible as of the date that it was included in either Westlaw or Dialog - the databases that permitted keyword searching of titles.

However, the Federal Circuit must not only determine that the reference was publicly accessible, but also when the reference was made publicly accessible. That is because “[a]bsent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C. 102(a) or (b).” Manual of Patent Examining Procedures § 2128. The Federal Circuit noted that no evidence was presented as to the timing or process by which Westlaw or Dialog incorporated the Copyright Office’s updated automated catalog information into their databases. As such, there was no indication as to when the Lister manuscript was made publicly available through the Westlaw and Dialog database, and whether it was prior to the critical date.

Since the mere existence of a reference is insufficient for establishing a publication date, and since no other substantial evidence in the record existed showing that the Lister manuscript was publicly accessible more than a year prior to the filing date of Dr. Lister’s application, the Federal Circuit vacated the Board’s decision and remanded for further proceedings consistent with its findings.