Ex Parte Manry et al

Board of Patent Appeals and Interferences

Oct 13, 2009

10872129 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHARLES WILLIAM MANRY JR., JOHN W. ROCKWAY,
JOHN D. ROCKWAY, AKIRA ISHIMARU and YASUO KUGA
____________________

Appeal 2009-005864
Application 10/872,129
Technology Center 3600
____________________

Decided: October 13, 2009
____________________

Before: WILLIAM F. PATE, III, JOHN C. KERINS and
KEN B. BARRETT, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
3, 8, 9 and 11-13. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
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The claims are directed to a method for resonance confocal imaging
of resonance control points. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for resonance confocal imaging of resonance
control points (RCIRCP), the method comprising the steps of:
a) receiving a far-field scattered response from a
structure over a frequency band from below first resonance
through several resonances;
b) determining resonance frequencies from said far-field
scattered response;
c) determining resonant control points of said structure
from said far-field scattered response at resonance frequencies;
d) returning to said determining resonance frequencies
step (b).

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Resonant Confocal Imaging (RCI) of Resonant Spatial Current Modes
of Structures in the Resonant Region. Slides presented at the National Radio
Science Meeting, Boulder, Colorado. January 1999. (Hereinafter “Rockway
presentation”)
Abstract of Resonant Confocal Imaging (RCI) of Resonant Spatial
Current Modes of Structures in the Resonant Region distributed at the
National Radio Science Meeting, Boulder, Colorado. January 1999.
(Hereinafter “Rockway abstract”)
Claims 1-3, 8, 9 and 11-13. stand rejected under 35 U.S.C. § 102(b) as
being clearly anticipated by the Rockway presentation1. Ans. 3.

1 The Examiner has withdrawn the rejection of claims 1-3, 8, 9 and 11-13
under 35 U.S.C. § 102(a). Ans. 2.
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ISSUE
Appellants do not dispute that the Rockway presentation, if available
as prior art, would anticipate the pending claims. Appellants contend
however, that the Rockway presentation does not constitute a “printed
publication” for purposes of 35 U.S.C. § 102(b). App. Br. 7-9. The Examiner
contends that because no confidentiality agreement was imposed on the
attendees, those interested in the presentation could have taken notes,
photographs or video of the presentation or could have contacted the
presenter by e-mail in order to locate the information contained in the slides.
From this the Examiner concludes that the Rockway presentation is a
“printed publication” for purposes of 35 U.S.C. § 102(b). Ans. 9-10. The
Examiner and Appellants agree that the Rockway abstract alone is not
sufficient to anticipate any of the pending claims. App. Br. 10; Decl. para. 6;
Ans. 10. Thus, the sole issue for our consideration is whether the Appellants
have established that the Examiner erred by determining that the Rockway
presentation constitutes a “printed publication” for purposes of 35 U.S.C.
§ 102(b).

FINDINGS OF FACT
1. The Rockway presentation was provided to the Examiner by Appellants
on December 14, 2006 in response to a request for information made by
the Examiner in the Non-Final Rejection mailed August 29, 2006.
2. The Rockway abstract was available as a printed publication at the time
of the National Radio Science Meeting in January 1999 and contained
the contact information of Yasuo Kuga, one of the inventors named in
the present application. Decl. para. 5.
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3. The Declaration establishes that the slides of the presentation were not
distributed at the meeting. Decl. para. 7.
4. The Declaration establishes that the entire presentation, consisting of
twenty slides, lasted less than twenty minutes. Decl. para. 8.
5. The Declaration establishes that the declarant did not disseminate the
slides of the presentation prior to June 18, 2003. Decl. paras. 10, 11.
6. The Declarant has no knowledge of any confidentiality agreements
imposed on attendees of the presentation. Decl. para. 12.
7. The Rockway presentation consisted of twenty slides.2 One slide
contained the title of the presentation and its authors. Three slides
contained bulleted information outlining the disclosed method. Six
slides contained a series of mathematical equations. Eight slides
contained graphical representations of experimental results.

PRINCIPLES OF LAW
In order to qualify as a printed publication within the
meaning of § 102, a reference “must have been sufficiently
accessible to the public interested in the art.” In re Cronyn, 890
F.2d 1158, 1160 (Fed. Cir. 1989) (quoting Constant v. Adv.
Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988)).
“Because there are many ways in which a reference may be
disseminated to the interested public, ‘public accessibility’ has
been called the touchstone in determining whether a reference
constitutes a ‘printed publication’ bar under 35 U.S.C.
§ 102(b).” In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986).
Whether a reference is publicly accessible is determined on a
case-by-case basis based on the “facts and circumstances
surrounding the reference’s disclosure to members of the
public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
2004). A reference is considered publicly accessible if it was

2 Slides 10 and 16 have not been made of record in the file wrapper.
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“disseminated or otherwise made available to the extent that
persons interested and ordinarily skilled in the subject matter or
art exercising reasonable diligence, can locate it.” Kyocera
Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350
(2008) (quotation marks omitted).

In re Lister ___F. 3d ___, 2009 WL 2998922 (Fed. Cir. 2009). However,
A document, to serve as a “printed publication”, must be
generally available. Garrett Corp. v. United States, 422 F.2d
874, 878, 164 USPQ 521, 524, 190 Ct.Cl. 858 (1970) (“While
distribution to government agencies and personnel alone may
not constitute publication ... distribution to commercial
companies without restriction on use clearly does.”) See
Massachusetts Institute of Technology v. AB Fortia, 774 F.2d
1104, 1109, 227 USPQ 428, 432 (Fed.Cir.1985) (paper orally
presented at a scientific meeting open to all persons interested
in the subject matter, with written copies distributed without
restriction to all who requested it, is a printed publication).

Northern Telecom, Inc. v. Datapoint Corp. 908 F.2d 931, 936 (Fed. Cir.
1990). “The key to the court’s finding [in MIT] was that actual copies of the
presentation were distributed.” Klopfenstein, 380 F.3d at 1349.
With regard to scientific presentations, it is important to note
than an entirely oral presentation at a scientific conference that
includes neither slides nor copies of the presentation is without
question not a “printed publication” for the purposes of 35
U.S.C. § 102(b). Furthermore, a presentation that includes a
transient display of slides is likewise not necessarily a “printed
publication.” See, e.g., Regents of the Univ. of Cal. v.
Howmedica, Inc., 530 F.Supp. 846, 860 (D.N.J.1981) (holding
that “the projection of slides at the lecture [that] was limited in
duration and could not disclose the invention to the extent
necessary to enable a person of ordinary skill in the art to make
or use the invention” was not a “printed publication”), aff'd,
676 F.2d 687 (3d Cir.1982) (unpublished table decision).
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Klopfenstein, 380 F.3d at 1349 n4. Where copies of an oral presentation
were not distributed, some factors that are relevant to determining whether
that presentation is a “printed publication” are: the length of time the display
was exhibited, the expertise of the target audience, the existence (or lack
thereof) of reasonable expectations that the material displayed would not be
copied, and the simplicity or ease with which the material displayed could
have been copied. Id at 1350.
“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be
entitled to a patent unless,’ concerning novelty and unobviousness, clearly
places a burden of proof on the Patent Office which requires it to produce
the factual basis for its rejection of an application under sections 102 and
103.” In re Warner 379 F.2d 1011, 1016 (CCPA 1967).

ANALYSIS
The Examiner has failed to establish that the Rockway presentation is
a “printed publication” for purposes of 35 U.S.C. § 102(b). Where the
Examiner has not provided a sufficient factual basis from which to conclude
a reference is a “printed publication” the burden does not shift to Appellants
to prove that it is not. Ans. 4. The Examiner’s conclusion that the Rockway
presentation is a “printed publication” is based upon speculative
assumptions. The record does not make clear whether, because of
professional and behavioral norms, or because of protective measures such
as non-disclosure agreements, the presenters had a reasonable expectation
that the information presented at the National Radio Science Meeting would
not be copied. Fact 6. There is no factual basis in the record to support a
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conclusion that the environment of the National Radio Science Meeting was
suitable for taking notes, photographing or video taping the presentation.
Ans. 9. Lighting conditions in the room, seating and behavioral norms all
play a role in creating such an environment and these facts are not in the
record. The length of time the slides were on display is also an important
factor. Appellants have established that the entire presentation lasted less
than twenty minutes. Fact 4. Given the number and complex nature of the
slides (See Fact 7), such a transient or ephemeral display leaves little
opportunity for even an audience of experts to capture the information
contained therein. Appellants have also established that actual copies of the
presentation were not distributed at the meeting or by the declarant. Facts 3
and 5. The fact that the abstract was published with the contact information
of one of the inventors does not establish that the information contained in
the slides was generally available or publicly accessible. Fact 2; Ans. 9-10.
The fact that persons interested and ordinarily skilled in the art exercising
reasonable diligence could establish the existence of the Rockway
presentation does not establish that those individuals could locate the
presentation itself. There is no evidence of record to establish that the
inventor, Yasuo Kuga, upon request, did provide, or would have provided,
written copies of the slides without restriction to persons interested in the
subject matter. Distribution to a government agency, such as the USPTO, in
response to a request of that agency does not constitute or establish
publication. See Fact 1. For these reasons the Examiner has not established
that the Rockway presentation was publicly accessible. Thus, the Examiner
has not established that the Rockway presentation is a “printed publication”
for purposes of 35 U.S.C. § 102(b).
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CONCLUSION OF LAW
On the record before us, Appellants have established that the
Examiner erred in determining that the Rockway presentation constitutes a
“printed publication” for purposes of 35 U.S.C. § 102(b).

DECISION
For the above reasons, the Examiner’s rejection of claims 1-3, 8, 9
and 11-13 under 35 U.S.C. § 102(b) as being clearly anticipated by the
Rockway presentation is reversed.

REVERSED

Vsh

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