Ex Parte Baird

Patent Trial and Appeal Board

Jun 18, 2018

13267561 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/267,561 10/06/2011
85628 7590 06/20/2018
SNELL & WILMER L.L.P. (UTC)
ONE ARIZONA CENTER
400 E. VAN BUREN STREET
PHOENIX, AZ 85004-2202
FIRST NAMED INVENTOR
Bradley W. Baird
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
63973.02300 5714
EXAMINER
NGO, DACTHANG P
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
06/20/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocket@sw law .com
tjessop@swlaw.com
kgilbert@swlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADLEY W. BAIRD
Appeal2017-008408
Application 13/267 ,561
Technology Center 2800
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
SHELDON M. McGEE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-10 and 12-16 under 35 U.S.C.
1 In explaining our Decision, we refer to the Final Office Action of July 14,
2016 (Final), Appeal Brief of January 3, 2017 (Appeal Br.), Examiner's
Answer of March 13, 2017 (Ans.), and Reply Brief of May 12, 2017 (Reply
Br.).
2 Appellant identifies the real party in interest as Goodrich Corporation.
Appeal Br. 1.
Appeal2017-008408
Application 13/267,561
§ I03(a) as obvious over O'Brien3 in view ofBaird,4 Senour, 5 Bode,6 and
Lin,7 and adding further prior art to reject claims 11, 17, and 28. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
The claims are directed to a system for predicting loading of a landing
gear. See, e.g., claim 1, Appeal Br. 14 ( claims appendix). Because the issue
in this appeal does not tum on the specifics of the invention, we need not
provide any more detail regarding the claimed invention. It is the Baird
reference that is at issue and whether it qualifies as prior art.
The Baird reference relied on by the Examiner in all of the appealed
rejections is Appellant's own master's thesis, which he prepared while he
was attending Ryerson University. Baird Deel. ,r,r 1-2. As the thesis is
Appellant's own work, in order for it to qualify as prior art it must have been
"a printed publication" within the meaning of 35 U.S.C. § I02(b) more than
one year prior to the date of the application for patent, i.e., before October
15, 2009. The sole issue on appeal is whether Appellant has identified a
reversible error in the Examiner's conclusion that Baird was a printed
publication that qualifies as prior art under the statute.
Appellant has identified such an error.
3 O'Brien, US 2009/0265120 Al, published October 22, 2009.
4 Bradley W. Baird, "Overload Detection/Health Monitoring Landing
Gear Sensor System Proposal," M.S. thesis, Ryerson University Digital
Commons@ Ryerson Paper 1157 (undetermined publication date) (See n.8).
5 Senour, US 3,584,503, issued June 15, 1971.
6 Bode, US 7,558,687 Bl, issued July 7, 2009.
7 Lin et al., US 2011/0044145 Al, published February 24, 2011.
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Application 13/267,561
In the Final Office Action, the Examiner relied on what appears to be
a date of "1-1-2008" listed above the title "Overload Detection/Health
Monitoring Landing Gear Sensor System Proposal" on the copy of Baird's
thesis obtained from Digital Commons @ Ryerson to find that the thesis was
published sometime in the year 2008. Final 3. Baird, however, declares that
he had not completed the thesis on January 1, 2008. Baird Deel. ,r 6.
Instead, he was working on the written component of the thesis in or about
October or November of 2008 and defended it in on or around December of
2008. Baird Deel. ,r,r 2, 4. Baird further declares that when he submitted the
thesis for review, he believed it would not be immediately published and he
does not know the actual publication date of his thesis. Baird Deel. ,r,r 7-8.
Baird offers no reason why he believed his thesis would not be immediately
published or any details on who he submitted the thesis to or what normally
is done with theses at Ryerson University. Instead, he merely declares that
he does not know the actual publication date. Baird Deel. ,r 8.
In the Answer, the Examiner agrees that, based on Appellant's
arguments and the Baird Declaration, "the publication of Baird (i.e.
Overload Detection/health Monitoring Landing Gear Sensor System
Proposal) could not have been published on January 1, 2008." Ans. 6. The
only evidence of publication on record is from the Open Access Theses and
Dissertations website, which includes a copy of the Thesis listing a
publication "date" of (presumably the year) 2013, which is well past the
critical date of October 15, 2009. See Appeal Br., evidence appendix, screen
shot of Open Access Theses and Dissertations website; see also
digital.library.ryerson.ca/islandora/ obj ect/RULA %3 A 141 7. Appellant also
provides a copy of the Internet Archive website showing that the Baird
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Application 13/267,561
Thesis was not retrieved electronically from the Ryerson digital library until
June 18, 2014. Appeal Br., evidence appendix, screen shot of Internet
Archive website.
To qualify as prior art as a printed publication by the critical date of
October 15, 2009, Baird's thesis must have been publically accessible by
that date. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986) ("'public
accessibility' has been called the touchstone in determining whether a
reference constitutes a 'printed publication' bar under 35 U.S.C. § 102(b )").
And more specifically the reference must have been made available to the
extent that a person interested and ordinarily skilled in the subject matter
exercising reasonable diligence could locate it. Kyocera Wireless Corp. v.
Int'! Trade Comm 'n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). The question is
highly fact specific and is based on the "facts and circumstances surrounding
the reference's disclosure to members of the public." In re Lister, 583 F.3d
1307, 1311 (Fed. Cir. 2009) (quoting In re Klopfenstein, 380 F.3d 1345,
1350 (Fed. Cir. 2004).
Universities have, in the past, submitted theses to the library and, in
such cases, a key indicator of public accessibility has been the extent to
which the document is shelved, indexed and cataloged in the library. Often
this evidence of shelving and cataloging is critical to the question of public
accessibility. See In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)
( concluding theses available in the main college library and in the
departmental library by student name and thesis title, but without being
generally indexed or cataloged were not sufficiently publicly accessible); In
re Bayer, 568 F.2d 1357 (CCPA 1978) (concluding a thesis housed, but not
shelved or cataloged, within a university library was not publicly
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Application 13/267,561
accessible); cf Hall, 781 F .2d at 899 ( concluding a dissertation shelved and
indexed in a card catalog at a German university was publicly accessible).
As shown in the above cases, although it has been the normal practice
of universities to retain copies of theses, there are various methods of
storing, indexing, and cataloging them in libraries with some methods rising
to the level of public accessibility and others not. It is reasonable to believe
that a copy of Baird's thesis was retained and stored by some method by
Ryerson University given the thesis was made electronically accessible by
Ryerson University in 2013. The problem is we have no evidence of when
and how Baird's thesis was stored, indexed, or cataloged before it was
published electronically.
Here, critical evidence is missing. Specifically, evidence with regard
to how the thesis was handled by Ryerson University and whether it was
housed in a library, indexed and cataloged. The dispositive question here is
one of burden: Who should have the burden of producing evidence on how
the thesis was handled at the Ryerson University. We note that even if
Appellant Baird did not personally know the actual publication date of the
thesis, evidence of the library's general practice for indexing, cataloging,
and shelving theses can be used to estimate the time it would have taken to
make the dissertation available to the interested public. Hall, 781 F .2d at
899 ("we conclude that competent evidence of the general library practice
may be relied upon to establish an approximate time when a thesis became
accessible.").
The Examiner determines that it would be reasonable to assume that
the thesis was published and distributed in the university sometime in the
early part of 2009 given Baird finished defending his thesis in December
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2008. Ans. 6. But as seen by the cases discussed above, not all methods of
storing theses at universities result in public accessibility.
The Examiner shifts the burden to Appellant stating that "[ t ]he
Appellant has not exhausted his searches or provided any concrete evidence
to prove that the publication was not published before October 15, 2009."
Id.
Appellant contends that the Examiner has produced no evidence as to
whether the Baird reference became publically accessible before the critical
date of October 15, 2009. Appeal Br. 8; Reply Br. 3--4.
We are unable to locate any cases squarely analyzing the question of
burden under the current facts where neither the examiner, another
proponent, nor the applicant appear to have undertaken to uncover how an
applicant's own thesis was stored by the university or how the university
usually handles theses. In the cases we have reviewed, the examiner,
applicant, or another entity provided information on the relevant library's
practices.
There are cases that state that the one advocating that the document
qualifies as a printed publication must meet the burden of showing it was
publicly accessible as of the critical date. Hall, 781 F .2d at 899 ("The
proponent of the publication bar 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 by examining the reference could make the claimed
invention without further research or experimentation.").
In Hall, it was the USPTO that undertook the investigation necessary
to determine a dissertation by Peter Foldi, which the record indicated was
submitted to the Department of Chemistry and Pharmacy at Frei burg
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University in Germany, was publically accessible before the critical date.
Hall at 897-98. It was the USPTO's Scientific Library that made the
necessary inquiries. 8 Based on the uncovered information, the examiner in
that case determined it was reasonable to assume that the Foldi thesis was
available (accessible) by the critical date and shifted the burden to applicant
Hall to state his "knowledge of any inquiry which may have been made
regarding 'availability' beyond that presently referred to in the record." Hall
at 898. Hall did not respond. The court in Hall affirmed the examiner's
rejection. Hall at 900.
On the other hand, the thesis in question in the present case is
Appellant's own work done while he was at Ryerson University. As such,
Appellant has more personal knowledge that would help in uncovering how
the thesis was disseminated or who to contact to determine the normal
practice the university and its libraries used to handle theses. In many cases,
an applicant has been the one to submit evidence regarding the shelving,
indexing, and cataloging of theses, in response to a rejection relying on the
applicant's own thesis. See Bayer, 568 F.2d at 1358 ("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").
However, it remains that the burden in on the examiner to make a
prima facie case of public accessibility. See Hall, 781 F .2d at 899 ("The
8 We note that the MPEP specifically states that the US PTO' s Scientific
Library (STIC) is available to provide information on publication dates. See
MPEP § 90I.06(a)(IV)(G) ("Requests pertaining to the earliest date of
publication or first distribution to the public of publications should be made
to the STIC EIC facility in the examiner's TC.").
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proponent of the publication bar must show that prior to the critical date the
reference was sufficiently accessible .... "). The Examiner here improperly
shifted the burden to Appellant before making a reasonable effort to obtain
evidence tending to show that the Baird thesis would have likely been
publically accessible prior to the critical date of October 15, 2009. Because
proof of public accessibility before the critical date is not reasonably
established, we do not sustain the Examiner's rejections, which all rely on
Baird.
DECISION
The Examiner's decision is reversed.
REVERSED
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