In re Lister - 583 F.3d 1307 (Fed. Cir. 2009)

Rule:

35 U.S.C.S. § 102(b) is a bar to patentability if the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States. 35 U.S.C.S. § 102(b). The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone.

Facts:

Dr. Richard Lister, a Ph.D. clinical psychologist and an avid sportsman, wrote a manuscript where he described his method of playing golf. Dr. Lister sought intellectual property protection for the said method. He obtained a certificate of registration from the Copyright Office, but subsequently learned that he needed to obtain a patent rather than a copyright in order to protect his invention. Dr. Lister then filed an application with the United States Patent and Trademark Office. The examiner rejected Dr. Lister’s applications, holding that the manuscript was sufficiently publicly accessible to be a printed publication within the meaning of 35 U.S.C. §102(b) because an interested researcher would have been able to find it by searching the Copyright Office's catalog by title. On appeal, the Board affirmed the § 102(b) rejection, holding that an interested researcher would have been able to find the manuscript by searching the Copyright Office's catalog by title for the word "golf" in combination with the word "handicap." In his request for rehearing before the Board, Dr. Lister argued that even if the manuscript, which described his method of playing golf, was sufficiently indexed so that an interested researcher could learn of its existence and relevance, the task of traveling and inspecting it at the Library of Congress was too burdensome for it to have been considered publicly accessible. Second, he argued that the manuscript was not a printed publication as of the critical date because there was no evidence that it was included in a catalog or index at that time that would have permitted an interested researcher to discover it. The Board rejected both arguments, and Dr. Lister timely appealed.

Issue:

Under the circumstances, was Dr. Lister’s application properly rejected under 35 U.S.C. §102(b)?

Answer:

No.

Conclusion:

Concerning availability for inspection, the court stated, inter alia, that a reference could be considered publicly accessible even if gaining access to it might required a significant amount of travel. Regarding Dr. Lister’s second argument, the court held that because the evidence contained in the Information Disclosure Statement neither provided substantial evidence that the manuscript was publicly accessible as of the critical date nor sufficed to prove a prima facie case of accessibility that would have shifted the burden to the applicant to show inaccessibility, the Board erred in affirming the examiner's 35 U.S.C.S. § 102(b) rejection.