"Printed Publication" Does Not Require Much Publication.

Affirming that a printed publication must be "publicly accessible" to constitute a prior art reference, the U.S. Court of Appeals for the Federal Circuit determined that information canceled from a foreign patent application during prosecution, but nevertheless discoverable upon inspection of the file of the subsequently issued patent, constitutes prior art. The Court announced that the nature of the disclosure and the indexing and classification of the issued foreign patent provided a "roadmap that would have allowed one skilled in the art to locate the application." Mark Bruckelmyer v. Ground Heaters, Inc. and T.H.E. Machine Company, Case No. 05-1412 (Fed. Cir. Apr. 20, 2006) (Lourie, J.).

A Canadian patented reference described "a portable heating system that places flexible hoses 'in the proximity to objects of various shapes and configuration which would otherwise be difficult to heat.'" The patent also made reference to the use of the system for applying heat to fresh concrete during extreme cold weather, which was the subject matter of Bruckelmyer's patent claims. Two drawings showing the system used to thaw frozen ground were canceled during prosecution and, therefore, were not in the issued patented reference. Bruckelmyer stipulated prior to the district court's entry of judgment that if the application, including the canceled drawings that issued as the Canadian patent, were a "printed publication," it would render the patents-in-suit invalid on the ground of obviousness. The district court ruled that the Canadian application, including the canceled drawings, was a printed publication.

On appeal the Federal Circuit affirmed and rejected Bruckelmyer's arguments that to be considered "publicly accessible," a reference "must either (1) be published to those interested in the art for a sufficient amount of time to allow them to 'capture[ ], process[ ] and retain[ ] the information conveyed by the reference, or (2) those interested must be able to locate the material in a meaningful way.'" Specifically, Bruckelmyer argued that the first factor was not satisfied because there was no evidence that the contents of the file wrapper were disseminated and the application file was only located in the Canadian Patent Office in Hull, Quebec. The second factor was not satisfied because a person of ordinary skill in the art interested in the subject matter of the patents-in-suit would not have been able to locate the figures because the Canadian Patent Office did not index or catalogue the Canadian application. Bruckelmyer further argued that the Canadian patent itself would not have provided guidance to a person skilled in the art to locate the canceled figures because the figures were canceled from the application during prosecution.

Instead the Court held that determination of what made a reference a "printed publication" under the statute was "whether a person of ordinary skill in the art interested in the subject matter of the patents in suit and exercising reasonable diligence would have been able to locate the [reference]." Relying on In re Wyer, the Court believed that, like published abstracts of applications available for public inspection, the published Canadian patent provided a "roadmap to the application." The Canadian patent stated the possible use of the system for thawing frozen ground, which was the same use contemplated by the claims of the patents at issue. The "printed publication" provision of section 102(b) "was designed to prevent withdrawal by an inventor-of that which was already in the possession of the public." The Court therefore concluded that the information canceled during the prosecution of the Canadian patent was within the term "printed publication."

Practice Note

While it is evident from a published abstract of a patent application that the corresponding patent application will contain more information than the abstract, this case is troubling since it is not evident from an issued patent whether any other information has been canceled during its prosecution. However, cancellation of such subject matter is a relatively rare event.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mr Toby Kusmer

McDermott Will & Emery 

28 State Street

Boston

02110

UNITED STATES 

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