Earlier this week we asked you our third Patent Bar Review Question of the Week. Times up! Here’s the question (to remind you) followed by the US Patent Office’s “Model Answer” as well as detailed commentary and analysis from from Patent Resources Group’s Academic Director Paul Gardner.
Question of the Week No. 3 (Q and A 31 from October 2000 Exam, Morning Session):
Which of the following do not represent prior art?
(A) The preamble of a Jepson claim.
(B) A technical journal as of its date of publication which is accessible to the public as of the date of its publication.
(C) A doctoral thesis indexed, cataloged and shelved in a university library.
(D) A disclosure publicly posted on the INTERNET, but containing no publication or retrieval date.
(E) Applicant’s labeling of one of the figures in the drawings submitted with his application as prior art.
Patent Office’s “Model Answer”
ANSWER: (D). See MPEP § 2128 under the subheading “Date of Availability,” of the
heading “Electronic Publications As Prior Art.”
(A) is wrong. See MPEP § 2129 under the heading “A Jepson Claim Results In An Implied Admission That Preamble Is Prior Art.”
(B) is wrong. See MPEP § 2128.02. A journal article or other publication becomes available as prior art on date it is received by at least one member of the public.
(C) is wrong. See MPEP § 2128.01 under the heading “A Thesis Placed In A University Library May Be Prior Art If Sufficiently Accessible To The Public.”
(E) is wrong. See In re Nomiya, 184 USPQ 607, 610 (CCPA 1975); 35 U.S.C. § 102(d); MPEP § 2129 under the heading “Admissions By Applicant Constitute Prior Art.”
Paul Gardner’s Commentary:
The following information relevant to the prior art issues raised by this question and the Patent Office’s “Model Answer” are worth noting.
i. Concerning the preamble of a Jepson claim, the subject of Answer Option (A), while it is correct that the recitation in the preamble is impliedly admitted to be prior art, the implication may be overcome by a credible explanation as to why the applicant used the Jepson format and did not intend it to be an admission of prior art. As the CCPA said, “a finding of obviousness should not be based on an implied admission erroneously creating imaginary prior art.” In re Ehrreich, 590 F.2d 902, 909-910 (1979).
ii. With regard to Answer Option (C), it is an overstatement to say that “a doctoral thesis indexed, cataloged and shelved in a university library,” without more, constitutes prior art. While the doctoral thesis in In re Hall, 781 F.2d 897, 909-910 (1986) was held to be prior art on the factual record there established, the court took pains to note that the proponent of the document asserted to be prior art “must show that prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art, so that such a one could make the claimed invention without further research or experimentation.” Three years later the court held in In re Cronyn, 890 F.2d 1158, (1989), that the theses there in issue did not qualify as prior art “because they had not been either cataloged or indexed in a meaningful way.” Specifically, “the only research aid was the student’s name, which, of course, bears no relationship to the subject of the student’s thesis.” In short, then, for a thesis in a library to be a “printed publication,” it must be both cataloged or indexed by subject matter and shelved so as to be accessible to the interested public.
iii. The fact that Answer Option (C) was considered by the Patent Office to be a correct statement of the law highlights the importance of carefully considering all answer options before selecting what the Patent Office considers to be “the most correct” answer. Although Answer Option (C) is an incomplete statement, and to that extent incorrect, it is less incorrect than Answer Option (D), which is the only one that would have received credit. (D), an internet posting with no indication of a date on or by which it was posted cannot be considered to be prior art.
For more information on preparing for the Patent Bar, please see Patent Resources Group’s Patent Bar Review Course homepage, where you can get information on upcoming dates and locations for the course, including Boston in June, New York in September, San Francisco in November, and Dallas in December. Those unable to attend can even take the review courses via extensive home study DVD course materials. No matter how you take the course, you’ll receive thousands of dollars of study material and software, an exceptional value. The PRG Patent Bar Review Course is the authoritative Bar Review course designed to get you the best results.
This post was edited by Chris Jagalla.