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In re Klopfenstein - 380 F.3d 1345 (Fed. Cir. 2004)


The statutory phrase "printed publication" under 35 U.S.C.S. § 102(b) has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was "published."  The determination of whether a reference is a "printed publication" under  35 U.S.C.S. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding the reference's disclosure to members of the public.


Appellant applicants Carol Klopfenstein and John Brent sought a patent for methods of preparing foods comprising extruded soy cotyledon fiber. In 1998, which was nearly two years before they filed their application, the applicants had presented a printed slide presentation at a meeting of chemists and at a university. The presentation was displayed continuously for two and a half days and one day, respectively. Every limitation of the invention was disclosed in the presentation. Although no copies of the presentation were disseminated, there was no prohibition on note-taking or copying. Only a few slides recited what was not already known in the field. The presentation was never catalogued or indexed in any library or database. In 2000, the applicants filed their application. In October 2001, nearly one year after its filing, the '950 patent application was rejected by the PTO examiner. On appeal, the Patent and Trademark Office's Board of Patent Appeals and Interferences ("Board") denied the application because the methods had already been described in a printed publication more than one year before the date of the application. The Board affirmed on the grounds that the full invention of the '950 application was made publicly accessible to those of ordinary skill in the art by the Liu reference and that this introduction into the public domain of disclosed material via printed display represented a "printed publication" under 35 U.S.C. § 102(b). The applicants sought further review.


Did the Patent and Trademark Office's Board of Patent Appeals and Interferences err in denying the application for a patent on the ground that the invention described in the patent application was not novel under 35 U.S.C.S. § 102(b) because it had already been described in a "printed publication" more than one year before the date of the patent application?




In affirming the Board's decision, the United States Court of Appeals for the Federal Circuit held that, because the presentation had been made publicly accessible, it constituted a printed publication for the purposes of § 102(b). The Court held that the fact that the presentation was never distributed to the public and was never indexed did not preclude a finding that it was a printed publication. The Liu reference itself was shown for an extended period of time to members of the public having ordinary skill in the art of the invention behind the '950 patent application. Those members of the public were not precluded from taking notes or even photographs of the reference. And the reference itself was presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed--particularly given the amount of time they had to copy the information and the lack of any restrictions on their copying of the information. Accordingly, the Court concluded that the Liu reference was made sufficiently publicly accessible to count as a "printed publication" under § 102(b)

As for the applicable standard of review, the Court explained that questions of law appealed from a Board decision are reviewed de novo.

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