Confessions of the Borat Applying Patent Examiner

By Gene Quinn
April 26, 2012

Yes, it was I. The former Borat applying patent examiner turned law student. See Prior Borat: Non-traditional Prior Art Rejections! I understand why this rejection has garnered such attention. The salacious image relied upon in the rejection looks almost out of place. But as a matter of prior art, such rejections are commonplace. Publications like the Borat image, referred to as non-patent literature, are relied upon merely to teach structure (i.e., compare the structure depicted in the published image to the claims). But rejections relying on NPL often require much greater leaps of logic.

For example, consider Sakraida v. AG Pro, Inc., 425 U.S. 273, 275 n.1. In this patent infringement suit, the Supreme Court, relying on the examiner’s application of an ancient tale from Greek mythology, held patent No. 3,223,070 invalid. The patent in question, entitled “Dairy Establishment,” taught a water flush system to remove cow manure from the floor of a dairy barn. The examiner applied a myth describing the fifth labor of Heracles, wherein a stream was re-routed to the floors of the Augean stables to clean up after immortal livestock. This is a clever rejection, relying on a Greek myth to describe a system that is old and known in the art that is well within the bounds of both the MPEP and the common law. Suddenly, using popular cultural references as teachings seems obvious.

If nothing other than offering comic relief, the now infamous Borat patent rejection has hopefully illustrated at least one fundamental truth to the inventor and patent practitioner alike – don’t forget to do a thorough search of non-patent literature. I won’t bore you with citations from the MPEP. We all know what the Manual says. Instead I will attempt to provide some general insights into the examination process.

The Patent Office is a far cry from the glory days described to me by many an old-timer examiner. The idea of searching through the “shoes” (repository bins for hard copy patent documents) seems antiquated. The digital realm now means your search is basically limitless from the comfortable confines of your computer. In a way, this hurt the examination process. Something special transpired when patent examiners went from patent stack to patent stack. Examiners used to interact and teach one another the art of patent searching, and therefore examining. Now the patent landscape is vast. An examiner can sit confined in their office without ever receiving any input. An examiner’s search should extend far beyond PG Pubs, Patents, and foreign patents. Basically, think prior art can be anything. The biggest challenge may instead be finding a reference with a reliable date.

Although it is probably not every day that film or pop-culture references are relied on to defeat a patent, this is undoubtedly a viable source. More importantly, what truly defines the typical search is the nature of the claimed technology; the maturity of the technology; and the ease with which claims can be searched. Some technologies lend themselves to picture searching. Imagine hitting an up/down arrow key on your keyboard for hours, flipping through thousands of patents looking for a particular structural element. Some technologies are simply rich. They have been around for a long time and have been modified, altered, and combined to the nth degree. In these cases, so many patents exist that the examiner may not have to look outside the patent literature. Biotech requires the examiner look to journal articles. Stringing together lists of search terms can be dangerous. A word search is only as good as the selected terms, but sometimes essential. And some technologies, including but not limited to “mankinis,” lend themselves to a simple Internet search.

Although methodologies may differ, the following method is a solid approach to searching any structural or mechanical device especially when an iconic scene from a film doesn’t immediately jump to mind. When I was examining medical devices I would open up a new case file and go right to the claims. Before reading the title, the abstract, the specification, or viewing a single figure, I would attack the claims element by element. After carefully reviewing all of the claims once, I would literally sketch figures coinciding to each independent claim. I would sit back and compare my sketches to the claims. I would then think about alternatives. How else might one draw the claimed device? This was essential to ascertain the breadth and scope of the claims. Then I would be certain of what the claim was and wasn’t reciting. I would be sure that I did not impart structures or relationships among different structural elements if they were not explicitly claimed. I would then consider if I needed any other drawings to cover dependent claims. I would also think about the specific terms used in the claims. What structure, meaning, or function, if any, did the terms impart? Then I would start my search. Although I always read the entire disclosure, I found it more useful to at least start my search before reading the specification. I didn’t want the specification teaching me the nature or character embodied in the device. Instead, I let the claims be my guide. This sketching method was even useful for method claims. If only Markman hearings provided such a rational approach to claim construction.

I was shocked by the effectiveness of my approach. I found myself going back to my sketches even in interviews with attorneys. Often the attorney wanted to talk to me about how the claimed invention was different than the prior art I had applied without addressing what the claims actually recited. I wondered if this was because the attorney became so far removed from the claims from having the figures, specification, prototypes, and inventor disclosures in mind.

Although the MPEP provides that Examiners should conduct an initial search which is as complete as possible, in keeping with the scope of the claims as well as disclosed features and subject matter which the examiner reasonably anticipates might be incorporated into the claims (see MPEP 714.12), the harsh reality is that in many cases the search begins and ends with the claims. The Office specifically reminded examiners of the goals of compact prosecution when it issued its Guidelines for Consideration of Responses After Final Rejection under 37 CFR 1.116(b) under the After Final Consideration Pilot (AFCP). What does this mean for the practitioner moving forward? Most practitioners will provide a representative set of claims always keeping in mind possible fall back positions properly disclosed in the specification. But it also seems that as a matter of strategy, disclosures are written as a practice in obfuscation. It is as if the applicant never wants to get pinned down on what the invention is or isn’t and/or which embodiments are being claimed.

So how to solve this problem? One approach: making sure that which you can envision being in a claim later ought to be somewhere within the original claim set, perhaps a very specific claim, to address the reality that many examiners search the claims and not the disclosure, despite what the USPTO and practitioners may desire. But again, this sort of practice seems antithetical to examiners and practitioners that seem driven by their misplaced adversarial ambitions. No doubt there are examiners that hold on to the patent defeating reference in interviews. No doubt there are practitioners that hide the ball and fight tooth and nail to claim the world without considering future invalidation. We should all be working together to drive innovation. Of course all of the digital tools employed today to perform a search are invaluable, when you sit down to draft your claims don’t forget about common sense and common cultural knowledge – whether Borat or Greek mythology.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 27 Comments comments.

  1. John Smith April 26, 2012 5:27 pm

    Sounds like 6 to me. And I wouldn’t put applying the Borat reference by him either.

    “I wondered if this was because the attorney became so far removed from the claims from having the figures, specification, prototypes, and inventor disclosures in mind.”

    Or the attorney was just simply interpreting the claims in light of the specification as you should have been doing.

    “After carefully reviewing all of the claims once, I would literally sketch figures coinciding to each independent claim. I would sit back and compare my sketches to the claims. ”

    Learned that in the academy did you?

    At least he’s finally in law school.

  2. Joe Robinson April 26, 2012 7:07 pm

    Solid approach to a process that may take up many a long search hours unnecessarily. The inclusion of such things such as pop culture is an increasingly needed idea. The digital world puts every idea on the internet as quickly as it leaves a person’s mouth. Mr. Robinson’s approach seems to have resulted in the correct decision. The ability to receive patents for original design is of utmost importance, but as the litigation of patent infringement continues to grow and grow, the work of patent examiners such as Mr. Robinson to correctly review and deny patent applications for existing designs has become equally important.

  3. Gene Quinn April 26, 2012 7:08 pm

    John Smith-

    Interesting comment, particularly given that your ISP places you accessing IPWatchdog.com through the USPTO servers, but your comment hardly sounds like someone who works for the USPTO. How curious? Did you cloak your IP Address to make it look like you are at the USPTO?

    I’m just concerned. James wrote an excellent article that I liked very much and which I found to be insightful, yet you mock him. Everyone knows there is nothing wrong with citing the Borat reference, which is the perfect reference in the underlying case since it looks identical to the invention that was claimed. So why would you mock that?

    Why also do you mock sketching the claim? Literally ALL of the old-time patent examiners I know told me that is what they did and that is how they trained patent examiners to start. Most patent attorneys don’t do that, as far as I know, which in some areas leads to claims that are not as tight as they could or should be. Frankly, if patent examiners all sketched claims then perhaps we wouldn’t get rejections that clearly are poorly thought out. If you are in the industry you have to know that some patent examiners will reject claims when the references they cite are missing elements specifically recited in the claims. A sketch should drive that home if one were done.

    I am also concerned by the fact that you seem to be using a fictitious name, you use a Yahoo e-mail address and your ISP seems to be the USPTO. On IPWatchdog I allow heated debate, but those who demand absolute anonymity are given absolutely no latitude. In my opinion it is inappropriate to anonymously criticize someone who is willing to put their name out there and legitimately participate in debate. I find it even less acceptable when a mocking tone is utilized.

    So what is your bias and who are you?

    -Gene

  4. James Robinson April 26, 2012 11:12 pm

    Hi John Smith:

    Thank you for your insightful comments. I don’t quite understand your reference to “6” (“Sounds like 6 to me. And I wouldn’t put applying the Borat reference by him either.”) but I considered your position nonetheless.

    To your first point:
    “the attorney was just simply interpreting the claims in light of the specification as you should have been doing.”
    Let’s break this down and consider from where one finds this guidance.

    The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827] (Fed. Cir. 2004).

    Now to take this further lets delve deeper into the claim construction process and look for further guidance.

    Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.

    Don’t you just love the dichotomy? To synthesize: we must give claims their broadest reasonable construction in light of the specification without reading limitations contained in the specification into the claims. I challenge the legal community to offer empirical evidence to support a conclusion on the meaning of “in light of”. If it were only so simple we would all have stayed on as scientists and engineers. Instead we get to fight over where to draw the line.

    To your second point:
    “Learned that in the academy did you?”

    In fact I did. I had a really sharp trainer in the academy. He put me on the straight and narrow path from day one. This approach was reinforced by my SPE. I often refer back to lessons learned from her now that I am on the other side of prosecution. Primaries, QASs, and examiners working in the Central Reexamination Unit also reinforced the approach. Try it the next time you work on something structural in nature. Might help you consider the myriad possibilities embodied in a seemingly narrow claim. Let me know how it works out. I’ve also used this approach to great success in my consulting work.

    To your third point: “At least he’s finally in law school.”

    I couldn’t agree with you more.

    Cheers,
    James Robinson

  5. MBT April 27, 2012 7:45 am

    I used the same examining approach. Many attorneys would be shocked to find out that often, I never even looked at the specification if I was examining originally-filed claims, unless I needed a definition or the claims were so obtuse they couldn’t be interpreted without the specification. If they were amended claims, then I would look for support. I was a biotech examiner and a DNA or protein sequence claimed as SEQ ID NO:1 was just that – and the sequence databases could usually give me the answer I needed.

    James – you seem like a good examiner – too bad so many of the good ones leave the office! I’m curious with your biotech background, why you were examining, well man-thong thingies? Thanks for your insight – this was a fun posting to read and very informative for those who were not examiners! As for John Smith’s comments, all I can say is that Examiners try very hard not to read limitations from the spec into the claims – and examining the claims independently from the spec allows the examiner to do just that without being biased by the drafter’s preferred embodiments. If you are a USPTO employee or examiner, then perhaps you might want to revisit the academy yourself.

  6. Stan E. Delo April 27, 2012 1:53 pm

    Thanks for the great article James! It is an interesting and eye opening look at the nuts and bolts of examination, which is very instructive for inventors and the practitioners who are preparing patent applications and representing them. I think I will forward a link to this article to my patent agent, and also have another very close look at the claims in my pending patent application. They seemed pretty rock solid to me, and were written by a very experienced agent, who apparently has a 90% allowance rate, and the claims seem to be very broad in my application.

    I certainly hope I won’t ever have to see you in court some day!

    Best regards,
    Stan~

  7. Stan E. Delo April 27, 2012 2:03 pm

    John Smith-

    You sure sound a lot like a re-named refugee from the Patently-O crowd of combatants!

    Stan~

  8. John Smith April 27, 2012 6:14 pm

    I’m John Gene and why you think I’m anonymous I certainly don’t know, my name is right there. I suppose you’re just paranoid? And no, I did not use cloaking technology.

    I do not think that there is anything wrong with citing the Borat reference, I simply smell a rat behind this particular fellow who shares a striking resemblance to our old friend. That is what I suppose you could call my bias. As if there are actually not only one, but two examiners that read all of their specifications. I could barely accept that, but there certainly aren’t more than one that announces it. But maybe I am simply mistaken.

    If you want to argue about sketching claims, then let’s do that. The attorneys most certainly are doing more than sketching the claims in most applications, attorneys include entire complete illustrating drawings. Sure, sketching is great to get a rough idea of what is claimed. But this guy thinks that because he made a sketch without even looking at the specification, and perhaps intentionally ignoring it, that his sketch is somehow more relevant than the attorney’s informed construction of the claim before him formed in view of the specification? Absolutely absurd examiner thinking. It is precisely this kind of thinking that leads to the outrageous rejections that are issued. You should hardly allow your site to be used to propagate thinking of this sort. I suppose it’s up to you though.

  9. Stan E. Delo April 27, 2012 6:58 pm

    Just out of curiousity, if your name is John Gene, why did you use the name John Smith in your original post? It doesn’t make any sense at all, and perhaps bodes badly for your erstwhile *clients*. You had better get it up buckwheat, or find another profession.

    If you are in fact an examiner, or worse yet a patent attorney, it might cost your *clients* perhaps millions of dollars in lost profit potential. This is NOT funny or like a video game where you can just re-set and try again. To hear that the USPTO is perhaps intentionally throwing away perhaps very valuable inventions is bad enough, but to have a bozo like yourself add insult to injury is pretty hard to tolerate from my perspective. Kappos and et al are trying Very Hard to make things better for us all, so please don’t go in that direction.

    No Cheers here,
    Stan~

  10. Stan E. Delo April 27, 2012 7:29 pm

    BTW- Witness this take on the rejection of the cleaning of stables using flowing water applicatiom that my patent agent sent to me a few hours ago-

    “BTW, the mentoined invention of washing manure out of a barn has acquired the name of “The Flush of Genius”

    Stan~

  11. step back April 28, 2012 12:57 pm

    James Robinson wrote:

    Basically, think [that] prior art can be “anything”.

    With due respect, I disagree.
    What about enablement?
    Was the Flush of Genius enabled by the mythology?

    Are science fiction books/movies valid sources of prior art; even though they don’t enable?
    (Kirk to Enterprise, two to beam up. Make it so Scotty [–how you enable it is your tech geek’s headache, not mine– I’m in “management”].)

  12. step back April 28, 2012 1:00 pm

    refugee from the Patently-O crowd of combatants

    Stan,

    Let the Patent-O Hunger Games begins
    –and may the odds ever be in your favor.

  13. Stan E. Delo April 28, 2012 1:53 pm

    Step-

    Your #11 comment reminds me of the *invention* of geosynchronous satellites that was first proposed back in the mid 50’s by Arthur C. Clarke, to be used as communication links for radio and television. Also, back during WWII he was deeply involved in working out the details of radar guidance for aircraft that were lost in the fog or soup over England trying to land safely with nearly empty gas tanks after returning from either France or Germany. Look up his book “Glide Path” if you don’t believe me, which is a fascinating read as per usual for Arthur.

    Did he enable the advent of cell phone communications or GPS guidance with his conjectures? I tend to think so, but I will leave that answer to the patent attorneys and agents that might be attending here.

    May the Force be with you,
    Stan~

  14. James Robinson April 28, 2012 11:08 pm

    Hi Step Back,

    You wrote:
    “What about enablement?
    Was the Flush of Genius enabled by the mythology?”

    This brings to mind a recent decision: see IMPAX LABORATORIES v. Aventis Pharmaceuticals, 545 F. 3d 1312 – CAFC 2008.

    The court in Impax stated:
    In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1336 (Fed.Cir. 2008) (citing In re Omeprazole Patent Litig., 483 F.3d 1364, 1379 (Fed.Cir.2007)). In other words, the prior art must enable the claimed invention. Minn. Mining & Mfg. Co. v. Chemque, Inc. (3M), 303 F.3d 1294, 1301 (Fed.Cir.2002). The “undue experimentation” component of that equation examines (1) the quantity of experimentation; (2) the amount of direction or guidance present; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the 1315*1315 art; and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed.Cir. 1988).

    So, Step Back, feel free to go through a complete Wands analysis to answer your question about the Dairy Establishment patent. To categorically take a contrary position to my statement about the availability of prior art without noting undue experimentation is unfounded. That being said, I do see your general point.

    cheers,
    James

  15. Stan E. Delo April 29, 2012 3:58 am

    James-

    In your opinion, did Arthur C. Clarke actually *invent* the implementation of stationary geosynchronous satellites for whatever reasons by writing a fictional story about them? At the time that he conjectured about it, no man or satellite had ever gone beyond the upper reaches of the atmosphere, as Sputnik didn’t happen until about 6 years after he posited the concept in the first place. Another good example of science fiction preceding the actually possible implementation of new technology is represented by the *invention* of what we now consider to be “modern” types of submarines. It was first posited by Jules Verne circa 1866 if I recall it correctly, in his very famous book entitled “20,000 Leagues under the Sea”

    At that time, submarines were very crude versions of what we know of today as submarines. Did Jules Verne in fact *invent* the first modern style of submarines, about fifty years before it was possible to build them? Welding technology didn’t really get off the ground until the advent of widely available electricity, that didn’t happen until about 1910 or so. Oddly enough, when I went to visit my aunt Carol a few years back, she took me up to an old building on a lake in up-state New York where Thomas Edison had built his first electrical power plant. I think it was Blue Lake, but am not sure about that. North of Albany about 30 or 40 miles.

    Cheerio,
    Stan~

  16. step back April 29, 2012 8:50 am

    Stan,

    The word, “invent” as taken in a per se form (generic form) does not limit itself to the species of “invent” –in a patent eligible sense. It is much broader.

    One can “invent” a clever lie, or witty joke or a fabricated fictional work.
    That is not the same as enabling those skilled in a useful art to make and use a new and useful process, machine, manufacture or composition of matter without undue experimentation.

  17. Gene Quinn April 29, 2012 12:32 pm

    step back-

    Prior art really can be anything. The focus, however, needs to be on what it teaches. Even something that is not enabled can be prior art under 103. Of course, it shouldn’t be prior art ever under 102 or the claim itself wouldn’t be enabled and/or work.

    This is how Samsung was able to legitimately say that the devices in the movie 2001: A Space Odyssey was prior art for the Apple design patents on the iPad. The design patent just protects what it looks like, not how it functions. See:

    http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2121_04.htm#sect2121.04

    -Gene

  18. step back April 29, 2012 3:15 pm

    Gene,

    Good point.
    Under 102, the whole enabling disclosure must be within the four corners of the one prior art reference.

    However, under a 103 obviousness rejection, the first question to ask is whether one “skilled” in the art would look to a science fiction work for “teachings” in the first place? (Without aid of hindsight, that is.)

  19. step back April 29, 2012 3:24 pm

    p.s.: (Need we add the caveat that the MPEP is not law in the first place?)

    p.p.s.: (And what about those college thesis indexing cases where, if the PhD thesis was not properly indexed in the college library catalog stack, one skilled in the art could not have “effective” access to it? If a work is cataloged as “science fiction” or “mythology”, would one “skilled” in the art could not have effective access to it?)

    As far as detailed enablement, well now we know:
    http://www.heyuguys.co.uk/2010/08/18/how-the-flux-capacitor-works/

  20. Stan E. Delo April 29, 2012 3:41 pm

    Step-

    Even if some obscure doctoral thesis had gotten *mis-placed* for a while, wouldn’t it constitute prior art and render a later invention obvious once it was finally *found* again? In the case of science fiction books, Schroedinger’s proverbial cat would have definately been let out of his/her box, as witnessed by perhaps millions of readers of the published book?

    Fascinating discussion guys- I grew up avidly reading science fiction from a very young age.

    Stan~

  21. But Enablement When? April 29, 2012 8:22 pm

    But; is the question of whether or not a reference is enabling (for 102 purposes) based on the date of the reference, the (priority) date of the patent/patent app, or some other date?

    Is it the enablement by/for a PHOSITA at the time of the reference, time of the patent/patent app, or when?

    To what date/time period are the Wands factors applied/applicable?

  22. step back April 29, 2012 8:33 pm

    Stan:
    In re Marshall W. CRONYN 890 F.2d 1158

    The sole question in this case is whether the Board of Patent Appeals and Interferences (Board) correctly held that three undergraduate theses were “printed publications” under 35 U.S.C. Sec. 102(b) (1982), which anticipated the invention for which a patent was sought. We hold that the theses were not “printed publications,” and we therefore reverse the Board.
    … This court and its predecessor twice recently have considered the status as printed publications of academic papers filed in a university library. In In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978), the Board held that a master’s thesis became a printed publication upon its receipt by a university library because the three-member faculty committee that had approved the thesis “could have located his thesis in the library where it was available to them on request,” so that the thesis “was capable of providing wide public access to the information it contained.” 568 F.2d at 1359, 196 USPQ at 673. On the critical date the library had received the thesis but had not yet cataloged it or placed it on the library shelves in bound form as it ultimately would do.

    more here: http://openjurist.org/890/f2d/1158/in-re-marshall-w-cronyn

  23. step back April 29, 2012 8:37 pm

    Stan, another similar case: SRI Int’l v. Internet Security Systems
    see here, at that “other” pat blog site: http://www.patentlyo.com/patent/2008/01/paper-posted-to.html

  24. Gene Quinn April 30, 2012 9:55 am

    But Enablement When-

    When it is your own patent application the invention must be enabled at the time of filing otherwise the filing is defective.

    When dealing with whether something is prior art it is a little different. A reference that is not enabled can be prior art under 103. If the non-enabled reference is combined with another reference (or two or three) to encompass the invention then you have a good obviousness rejection. Each of those references that would form the combination 103 would have to have been in existence prior to the date of invention (generally speaking). If you can remove a reference for whatever reason then the obviousness rejection falls.

    -Gene

  25. MBT April 30, 2012 10:19 am

    US Patents are presumed to be enabled, absent evidence to the contrary…. Non-patent literature, is, well, it depends…

    As for dissertations, absent a prior copyright filing, shelving dates are critical to whether the dissertation is “publically available or not. The PTO (“STIC”) librarians spend a lot of time tracking down shelving dates. How “publically” available the library is usually doesn’t matter in these days of electronic card catalogs, but there is a presumption that POSITA can (and already did) enter and peruse the shelves to find it. The case law, as indicated above is a little scattered on the subject – which of course, is a litigator’s dream.In re Hall 781 F.2d 897 (fed Cir. 1986) held that a single copy of a doctoral thesis in a German university library, which was properly cataloged WAS proper anticaptory art. In re Cronyn, cited by StepBack above, held that the three student thesis listed alphabetically in a shoe box in a chemistry department files were held to not be accessible as printed publications. 890 F.2d 1158 (Fed. CIr. 1989) SRI Int’l (also cited by StepBack) held that a publication available on a publically-available server, but posted prior to an official “publication date” was considered publically available. 511 F.3d 1186 (Fed.Cir. 2008) I think it is safe to say that a dissertation that is available on a library’s electronic card catalog system is publically available – even if the library were in a monestary in the Himalayans… IMHO.

  26. But Enablement When? April 30, 2012 11:13 am

    Thanks Gene.

    So, when dealing with whether something is 102 prior art, is whether it is enabled based on the date of the “something,” the date of the patent application, or some other date?

    Let’s say the “something” is an article in some journal; where the journal/article was publicly available on June 15, 2000; and the patent app has an August 5, 2003 priority date.

    Is the enablement question based on the 6/15/00 article (and PHOSITA capability) date; on the 8/5/03 app (and PHOSITA capability) date, or some other date?

    Basically; for 102; when must the article be enabling? And which time period PHOSITA is used to determine such enablement–the June, 2000 PHOSITA; or the (presumably more knowledgeable with 3+ more years of time having passed) August, 2003 PHOSITA?

  27. step back May 1, 2012 2:18 pm

    BEW,

    I suspect you are missing a fundamental concept in patent law.

    Each filed patent application is accorded an “effective filing date” (EFD).

    (That is the broad concept. More correctly, each claim inside a filed application is accorded its individual, “effective filing date” and it is possible for 2 claims in one app to have different EFDs –for example if the app is a CIP.)

    The day which is immediately before the EFD is the prior art date.
    The question then becomes: What did the “interested public” have effective access to on the day before the EFD and what new (novel and nonobvious) contribution did the inventor bring into the room as an addition on the EFD?

    I hope that helps you sort it out in your head. 🙂