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),
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.
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:
Turning to the "publication" requirement, the board noted that the touchstone is public accessibility and resolved the question in the following manner:
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,
In conclusion, the board stated:
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
Appellant also asserts that it is well-settled that a foreign patent application laid open to public inspection is not a printed publication, citing In re Haller, 103 USPQ 332 (Bd. App. 1953). The only difference between that case and the case at bar, it is maintained, is that there one full-sized legible copy was at issue, whereas here seven copies were laid open to inspection which could not be read without magnification. Appellant argues that whether a patent application open to inspection in a foreign patent office is a printed publication should not depend upon the technique used to reproduce the application.
The solicitor, on the other hand, argues that we should reexamine the (allegedly) broad holding of In re Tenney, supra, that microfilm is not a printed publication. The PTO emphasizes that the Tenney court noted in that case that there was only one microfilm available. It stated that "there is no probability from a mere showing that a microfilm copy of a disclosure has been produced, that the disclosure has achieved wide circulation and that, therefore, the public has knowledge of it." The instant case is different, the PTO argues, for all but one diazo copy has been geographically distributed to sub-offices, ostensibly to facilitate viewing by the Australian public. Since the patent office was ready to supply, on order, blown-up prints made from the diazo copies, the probability of public knowledge of appellant's application exceeds that for the German application in Tenney. Any requirement that prints be made in advance, it is submitted, would defeat the very purpose of using microfilm, which is to save space.
It has been stated by this and other courts that to constitute a "printed publication," as that term is used in § 102, a reference must be both "printed" and "published." In re Bayer, 568 F.2d 1357, 1359, 196 USPQ 670, 673 (CCPA 1978); In re Tenney, 45 CCPA 894, 898, 254 F.2d 619, 622, 117 USPQ 348, 351 (1958); General Tire & Rubber Co. v. Firestone Tire Co., 349 F.Supp. 345, 355, 174 USPQ 427, 442 (N.D.Ohio 1972), modified, 489 F.2d 1105, 180 USPQ 98 (6th Cir. 1973). See generally 1 Chisum, Patents § 3.04 (1978); Rose, Do You Have A "Printed Publication?" If Not, Do You Have Evidence Of Prior "Knowledge Or Use?", 61 JPOS 643 (1979); Herbster, It's Time To Take The "Printing" Out Of "Printed Publications", 49 JPOS 38 (1967).
With regard to the "printing" requirement, it has been stated that the "only realistic distinction that we can see as between `handwritten' and `printed' publications relates to the method of producing them." Tenney, supra at 901, 254 F.2d at 625, 117 USPQ at 353 (emphasis in original). In other words, the requirement of printing increases the probability that a reference will be available to the public, for "Congress no doubt reasoned that one would not go to the trouble of printing a given description of a thing unless it was desired to print a number of copies of it." Id. at 902, 254 F.2d at 626, 117 USPQ at 354.
The "publication requirement," said to be "so connected with [the "printing" requirement] that treatment of the one cannot be satisfactorily done without overstepping into the bounds of the other," Id. 45 CCPA at 898 n.4, 254 F.2d at 622 n.4, 117 USPQ 351 n.4, has been equated with public accessibility to the "printed document." In re Bayer, supra 568 F.2d at 1359, 196 USPQ at 673.
On the other hand, there are a number of cases which eschew this two-tiered approach and view the unitary concept of "printed publication" in the context of dissemination or accessibility alone. Philips Electronics & Pharmaceutical Industries
We agree that "printed publication" should be approached as a unitary concept. The traditional dichotomy between "printing" and "publication" is no longer valid. Given the state of technology in document duplication, data storage, and data-retrieval systems, the "probability of dissemination" of an item very often has little to do with whether or not it is "printed" in the sense of that word when it was introduced into the patent statutes in 1836.
As this court pointed out in In re Bayer, supra 568 F.2d at 1359, 196 USPQ at 675, the printed publication provision was designed to prevent withdrawal by an inventor, as the subject matter of a patent, of that which was already in the possession of the public. Thus, the question to be examined under § 102(b) is the 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. Access involves such factual inquiries as classification and indexing. In other words, such a reference is a "printed publication" and a bar to patentability
Appellant filed an application for an Australian patent which resulted in copies of that application being classified and laid open to public inspection at the Australian Patent Office and each of its five "sub-offices" over one year before he filed his application in the United States. Appellant himself informs us that:
Even though no fact appears in the agreed statement respecting actual viewing or dissemination of any copy of the application, there is no dispute that the records were maintained for this purpose. Given that there is also no genuine issue as to whether the application was properly classified, indexed, or abstracted, we are convinced that the contents of the application were sufficiently accessible to the public and to persons skilled in the pertinent art to qualify as a "printed publication," notwithstanding those cases holding that a foreign patent
While intent to make public, activity in disseminating information, production of a certain number of copies, and production by a method allowing production of a large number of copies may aid in determining whether an item may be termed a "printed publication," they are neither always conclusive nor requisite. Each case must be decided on the basis of its own facts. Accordingly, whether information is printed, handwritten, or on microfilm or a magnetic disc or tape, etc., the one who wishes to characterize the information, in whatever form it may be, as a "printed publication"
Through demonstration of the accessibility of reproductions of appellant's application in the Australian Patent Office and in each of its sub-offices, the PTO has met this burden.
In affirming the board's decision, however, we do not approve its rather sweeping statement, quoted at the beginning, that
We are approving its decision on the totality of the facts of this case, several of which are missing from that statement. Decision in this field of statutory construction and application must proceed on a case-by-case basis.
The decision of the board affirming the rejection of claims 1-5 and 7-13 is affirmed.