In Re Leo M. Hall
781 F.2d. 897, 228 U.S.P.Q. (BNA) 453, 1986 U.S. App. LEXIS 19970 (1986)
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Rule of Law:
A document is considered a publicly accessible "printed publication" under 35 U.S.C. § 102(b) if it is cataloged and shelved in a single library open to the public. The date of accessibility can be established through competent evidence of routine business or library practices, even without proof of a specific date of cataloging.
Facts:
- In September 1977, Peter Foldi submitted his doctoral dissertation to the Department of Chemistry and Pharmacy at Freiburg University in the Federal Republic of Germany.
- The Freiburg University library received copies of the Foldi dissertation from the faculty on November 4, 1977.
- The library's director, Dr. Erich Will, stated that all dissertations are indexed in a special catalog which is part of the general users' catalog.
- Dr. Will also stated that the dissertations are shelved in a special section that is part of the library's general stacks.
- Based on the library's regular processing procedures, Dr. Will declared that the Foldi dissertation was most probably available for general use by the beginning of December 1977.
Procedural Posture:
- Hall filed reissue Application No. 343,922 with the U.S. Patent and Trademark Office (PTO).
- During prosecution, a protest was filed which included a copy of the Foldi dissertation.
- The PTO patent examiner issued a final rejection of claims 1-25 under the 35 U.S.C. § 102(b) bar, citing the Foldi dissertation as a prior printed publication.
- Hall appealed the examiner's rejection to the PTO's Board of Appeals (later the Board of Patent Appeals and Interferences), the PTO's internal administrative appeal body.
- The board sustained the examiner's final rejection and, upon reconsideration, adhered to its decision.
- Hall (appellant) appealed the board's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a doctoral dissertation that is indexed and shelved in a single university library qualify as a "printed publication" under 35 U.S.C. § 102(b) sufficient to bar a patent, based on evidence of the library's routine processing practices rather than a specific date of cataloging?
Opinions:
Majority - Baldwin, Circuit Judge.
Yes. A doctoral dissertation indexed and shelved in a single university library qualifies as a "printed publication" under 35 U.S.C. § 102(b). The court determined that "public accessibility" is the touchstone for whether a document is a printed publication, not the number of copies or locations. Competent evidence of a library's general and routine practices for cataloging and shelving is sufficient to establish an approximate date of public availability. Here, the librarian's affidavits provided persuasive evidence that the dissertation was accessible well before the critical date, creating a prima facie case for the publication bar which the appellant failed to rebut.
Analysis:
This decision clarifies the evidentiary standard for the "printed publication" bar in patent law, particularly for academic works like theses. It establishes that direct proof of a specific cataloging date is not essential; instead, circumstantial evidence based on routine business practices can be sufficient to prove public accessibility. This ruling lowers the evidentiary burden for patent examiners seeking to establish prior art, confirming that a single, properly cataloged copy of a work in a publicly accessible library can place an invention in the public domain and thus bar a subsequent patent.
