This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board), adhered to on reconsideration, affirming the rejection of claims 6, 8, 11-13, 20-25, and 28-37 of appellant's application serial No. 291,484, filed September 22, 1972, for "Transition Metal-Naphthyridine Chemical Complexes."
Proceedings in the PTO
The sole reference relied upon by the examiner and the board is appellant's thesis entitled "Coordination Complexes of 2-methyl-5-hydroxy-1,8-naphthyridine," to which reference is made in the present application. The thesis was authored while appellant was a graduate student at the University of Toledo, and was submitted in partial fulfillment of the degree requirements for a Masters of Science in chemistry. The application states that the thesis is available in the university library.
Appellant questioned the propriety of the rejection, urging that mere receipt of the thesis by the library was insufficient to create a statutory bar. It has been appellant's position throughout these proceedings that in order to constitute a bar, the thesis must also have been catalogued and shelved, i. e., accessible to the public, more than one year prior to the effective filing date of the present application.
In an effort to show that his thesis was inaccessible to the public as of the "critical date," February 27, 1967, appellant submitted a declaration of Mary W. Hartsfield, Chief Catalogue Librarian at the University of Toledo, which (1) outlined the procedures followed for receiving, binding, cataloguing, and shelving student theses during 1966 and 1967, and (2) attested to the dates on which these procedures were performed with respect to appellant's thesis.
Hartsfield declared that the practice was to accumulate masters' theses in an office which was under her supervision and control, and to which only library employees had authorized access. The Catalogue Department staff catalogued the thesis, which involved collating, assigning call numbers, preparing temporary slips for the shelf list catalogue
As for appellant's thesis, Hartsfield stated, on information and belief, that it was received between April 18 and May 1, 1966; that cataloguing functions were performed with respect thereto between January 1 and March 7, 1967; and that post-bindery processing was completed on March 7, 1967.
Concerning the prerequisites for gaining access to appellant's thesis prior to the completion of processing, Hartsfield stated, inter alia, that one would have had to identify the thesis by author or title, or describe the subject matter thereof with particularity.
Finding appellant's arguments and the declaration unpersuasive, the examiner maintained the position that the thesis was a valid reference as of its receipt date, and further contended that appellant's thesis defense before a graduate committee comprised of appellant's adviser and two other faculty members, which occurred prior to the submission of the thesis to the library, constituted
The examiner also asserted in his Answer that appellant should not be permitted to benefit from the university library's failure to perform, in a timely manner, its function of disseminating knowledge.
The board did agree, however, that appellant's thesis defense
The board's opinion following appellant's request for reconsideration further explicated its original holding as follows:
Appellant does not dispute that his thesis is printed.
It is well settled that in determining whether a printed document constitutes a publication bar under 35 U.S.C. § 102(b) the touchstone is public accessibility. This follows logically from the theory that the patent grant is in the nature of a contract between the inventor and the public. Hence, if knowledge of the invention is
We are here concerned with a question of degree, namely, what degree of public accessibility is required for a printed document to qualify as a publication under the statute. Appellant maintains that accessibility to the general public is required, whereas the board expressed the view that accessibility to any part of the public will suffice. Authority can be mustered to support either position.
The essential requisites for publication set forth in 1 W. Robinson, The Law of Patents § 325 at 446 (1890), insofar as are here pertinent, are that the publication be: "(1) A work of public character intended for general use; (2) within reach of the public * * *." With respect to the first of these requisites, it is stated:
Id. § 326 at 447.
That the publication be within the reach of the public is amplified as follows:
Id. § 327 at 448.
Of similar import is the following excerpt from Popeil Brothers, Inc. v. Schick Electric, Inc., 494 F.2d 162, 166, 181 USPQ 482, 485 (C.A. 7 1974):
Needless to say, appellant relies on the foregoing authorities to support his position.
The board's holding, in essence, is founded on the proposition enunciated in Pickering v. Holman, 459 F.2d 403, 407, 173 USPQ 583, 585 (C.A. 9 1972) (citing 1 A. Deller, Deller's Walker on Patents § 60 at 272 (2d ed. 1964)) that "[a]nything that is printed and made accessible to any part of the public is a printed publication." However, a review of the cases
The printed documents relied upon to show patent invalidity in Imperial Glass Co. v. A. H. Heisey & Co., supra note 10, were glass manufacturers' catalogues. The trial court refused to consider the catalogues, thinking that they were not publications within the meaning of the statute because they were not found in a library. The appellate court held that to be error, reasoning that "manufacturer's catalogues so circulated are more effective in spreading information among persons skilled in that art than if the same catalogues were only on file in some public library." Id. at 269. This rationale was followed in Jockmus v. Leviton, 28 F.2d 812, 813-14 (C.A. 2 1928), wherein it was stated:
From the foregoing authorities, we think it apparent that a printed document may qualify as a "publication" under 35 U.S.C. § 102(b), notwithstanding that accessibility thereto is restricted to a "part of the public," so long as accessibility is sufficient "to raise a presumption that the public concerned with the art would know of [the invention]." Camp Bros. & Co. v. Portable Wagon Dump & Elevator Co., supra note 10, at 607. Cf. Garrett Corp. v. United States, 422 F.2d 874, 190 Ct.Cl. 858, cert. denied, 400 U.S. 951, 91 S.Ct. 242, 27 L.Ed.2d 257 (1970). Accessibility to appellant's thesis by the three members of the graduate committee under the circumstances of the present case does not raise such a presumption.
Moreover, since appellant's thesis could have been located in the university library only by one having been informed of its existence by the faculty committee, and not by means of the customary research aids available in the library, the "probability of public knowledge of the contents of the [thesis]," In re Tenney, supra, 254 F.2d at 626, 45 CCPA at 902, 117 USPQ at 354, was virtually nil.
The board's opinion does not specifically address the examiner's argument that the library's inefficiency should not redound to appellant's benefit, and the solicitor has reasserted it in his brief, paraphrasing Alexander Milburn Co. v. Davis Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926), thus, "the delays of the university library ought not to cut down the effect of what has been done[;] and appellant had taken steps that would make his thesis public as soon as the university library did its work." However, this argument overlooks conceptual differences between 35 U.S.C. § 102(b) and 35 U.S.C. § 102(e),
The concept underlying 35 U.S.C. § 102(e) is that a complete description of an applicant's invention in an earlier filed application of another, which subsequently matures into a patent, constitutes prima facie evidence that the applicant is not the first inventor of the invention in controversy. The Supreme Court in Milburn was of the opinion that administrative delays in the Patent Office should not detract from the anticipatory effect of such evidence.
The publication bar of 35 U.S.C. § 102(b), as mentioned previously, operates upon the theory that the invention in controversy is in the public domain, and once there, is no longer patentable by anyone. The date on which the public actually gained access to the invention by means of the publication is the focus of inquiry. As stated in In re Tenney, supra, 254 F.2d at 626, 45 CCPA at 902, 117 USPQ at 354, "the public is not to be charged with knowledge of a subject
The solicitor reiterates a second point raised in the examiner's Answer, although in a different context, arguing that "intent that the fruits of research be available to the public is determinative of publication under the statute * * *." Hamilton Laboratories, Inc. v. Massengill, 111 F.2d 584, 585, 45 USPQ 594, 595 (C.A. 6), cert. denied, 311 U.S. 688, 61 S.Ct. 65, 85 L.Ed. 444 (1940). The solicitor's contention is that at the time appellant applied for a patent he no longer had any consideration to offer because the invention was already possessed by the public as partial consideration for the appellant's degree.
Aside from the fact that the language quoted from Hamilton Laboratories was, in the court's words, "not determinative of ultimate issues in the present case," we think that, as an expression of the applicable law concerning printed publications, it is ill-conceived, and we decline to follow it.
The general rule is that intent, being a state of mind, is rarely susceptible of direct proof, but must ordinarily be inferred from circumstantial evidence. In our view, the evidence of record bearing most prominently on appellant's intent is the fact that a patent application was indeed filed. This fact belies any intent on appellant's part that the "fruits of his research" were to be available to the public.
We have carefully reviewed the board's decision and the solicitor's arguments in support thereof, however, we are unconvinced that appellant's thesis defense before the graduate committee in its official capacity as arbiter of appellant's entitlement to a master's degree was somehow transmuted into a patent-defeating publication merely by depositing the thesis in the university library where it remained uncatalogued and unshelved as of the critical date in question. We believe that the board has attempted to draw too fine a line of distinction here, and in so doing, has unjustifiably denied appellant's claims.
In view of the foregoing, we conclude that the board erred in holding that appellant's thesis constituted a "publication" within the meaning of 35 U.S.C. § 102(b).