## United States Court of Appeals for the Federal Circuit

03-1583

(Serial No. 09/699,950)

IN RE CARL F. KLOPFENSTEIN and JOHN L. BRENT, JR.

[John M. Collins]{.underline}, Hovey Williams LLP, of Kansas City,
Missouri, argued for appellants. With him on the brief was [Jill D.
Singer]{.underline}. Of counsel was [Gregory J. Skoch]{.underline}.

[Henry G. Sawtelle]{.underline}, Associate Solicitor, United States
Patent and Trademark Office, of Arlington, Virginia, argued for
appellee. With him on the brief were [John M. Whealan]{.underline},
Solicitor and [Heather F. Auyang]{.underline}, Associate Solicitor.

Appealed from: United States Patent and Trademark Office,

Board of Patent Appeals and Interferences

# **United States Court of Appeals for the Federal Circuit**

03-1583

(Serial No. 09/699,950)

IN RE CAROL F. KLOPFENSTEIN and JOHN L. BRENT, JR.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

> DECIDED: August 18, 2004

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Before MICHEL, SCHALL, and PROST, [Circuit Judges]{.underline}.

PROST, [Circuit Judge]{.underline}.

Carol Klopfenstein and John Brent appeal a decision from the Patent and
Trademark Office's Board of Patent Appeals and Interferences ("Board")
upholding the denial of their patent application. The Board upheld the
Patent and Trademark Office's ("PTO's") initial denial of their
application on the ground that the invention described in the patent
application was not novel under 35 U.S.C. § 102(b) because it had
already been described in a printed publication more than one year
before the date of the patent application. We affirm.

BACKGROUND

A.

The appellants applied for a patent on October 30, 2000. Their patent
application, Patent Application Serial No. 09/699,950 ("the '950
application"), discloses methods of preparing foods comprising extruded
soy cotyledon fiber ("SCF"). The '950 application asserts that feeding
mammals foods containing extruded SCF may help lower their serum
cholesterol levels while raising HDL cholesterol levels. The fact that
extrusion reduces cholesterol levels was already known by those of
ordinary skill in the art that worked with SCF. What was not known at
the time was that double extrusion increases this effect and yielded
even stronger results.

In October 1998, the appellants, along with colleague M. Liu, presented
a printed slide presentation ("Liu" or "the Liu reference") entitled
"Enhancement of Cholesterol-Lowering Activity of Dietary Fibers By
Extrusion Processing" at a meeting of the American Association of Cereal
Chemists ("AACC"). The fourteen-slide presentation was printed and
pasted onto poster boards. The printed slide presentation was displayed
continuously for two and a half days at the AACC meeting.

In November of that same year, the same slide presentation was put on
display for less than a day at an Agriculture Experiment Station ("AES")
at Kansas State University.

Both parties agree that the Liu reference presented to the AACC and at
the AES in 1998 disclosed every limitation of the invention disclosed in
the '950 patent application. Furthermore, at neither presentation was
there a disclaimer or notice to the intended audience prohibiting
note-taking or copying of the presentation. Finally, no copies of the
presentation were disseminated either at the AACC meeting or at the AES,
and the presentation was never catalogued or indexed in any library or
database.

B.

On October 24, 2001, nearly one year after its filing, the '950 patent
application was rejected by the PTO examiner. The examiner found all of
the application's claims anticipated by the Liu reference or obvious in
view of Liu and other references. Shortly thereafter, the appellants
amended the claims of the '950 patent and described the circumstances
under which the Liu reference had been displayed to the AACC and at the
AES. The appellants argued that the Liu reference was not a "printed
publication" because no copies were distributed and because there was no
evidence that the reference was photographed. The examiner rejected
these arguments and issued a final office action on April 10, 2002
rejecting the claims of the '950 application. The appellants then
appealed to the Board.

Before the Board, the appellants again advanced their argument that the
lack of distribution and lack of evidence of copying precluded the Liu
reference from being considered a "printed publication." The appellants
further contended that the Liu reference was also not a "printed
publication" because it was not catalogued or indexed in any library or
database. The Board rejected the appellants' arguments and affirmed the
decision of the PTO examiner, finding the Liu reference to be a "printed
publication." 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 appellants have appealed the Board's decision to this court. We have
jurisdiction to hear this appeal under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

A.

Where no facts are in dispute, the question of whether a reference
represents a "printed publication" is a question of law. [In re
Cronyn]{.underline}, 890 F.2d 1158, 1159 (Fed. Cir. 1989). Questions of
law appealed from a Board decision are reviewed de novo. [In re
Bass]{.underline}, 314 F.3d 575, 576 (Fed. Cir. 2002).

The only question in this appeal is whether the Liu reference
constitutes a "printed publication" for the purposes of 35 U.S.C.
§ 102(b). As there are no factual disputes between the parties in this
appeal, the legal issue of whether the Liu reference is a "printed
publication" will be reviewed de novo.

B.

The appellants argue on appeal that the key to establishing whether or
not a reference constitutes a "printed publication" lies in determining
whether or not it had been disseminated by the distribution of
reproductions or copies and/or indexed in a library or database. They
assert that because the Liu reference was not distributed and indexed,
it cannot count as a "printed publication" for the purposes of 35 U.S.C.
§ 102(b). To support their argument, they rely on several precedents
from this court and our predecessor court on "printed publications."[^1]
They argue that [In re Cronyn]{.underline}, [In re Hall]{.underline},
781 F.2d 897 (Fed. Cir. 1986), [Massachusetts Institute of Technology v.
AB Fortia]{.underline}, 774 F.2d 1104 (Fed. Cir. 1985)
("[MIT]{.underline}"), and [In re Wyer]{.underline}, 655 F.2d 221 (CCPA
1981), among other cases, all support the view that distribution and/or
indexing is required for something to be considered a "printed
publication."[^2]

We find the appellants' argument unconvincing and disagree with their
characterization of our controlling precedent. Even if the cases cited
by the appellants relied on inquiries into distribution and indexing to
reach their holdings, they do not limit this court to finding something
to be a "printed publication" [only]{.underline} when there is
distribution and/or indexing. Indeed, the key inquiry is whether or not
a reference has been made "publicly accessible." As we have previously
stated,

> The statutory phrase "printed publication" 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."

[In re Cronyn]{.underline}, 890 F.2d at 1160 (quoting [Constant v.
Advanced Micro-Devices, Inc.]{.underline}, 848

F.2d 1560, 1568 (Fed. Cir. 1988)).[^3] For example, a public billboard
targeted to those of ordinary skill in the art that describes all of the
limitations of an invention and that is on display for the public for
months may be neither "distributed" nor "indexed"---but it most surely
is "sufficiently accessible to the public interested in the art" and
therefore, under controlling precedent, a "printed publication." Thus,
the appellants' argument that "distribution and/or indexing" are the key
components to a "printed publication" inquiry fails to properly reflect
what our precedent stands for.

Furthermore, the cases that the appellants rely on can be clearly
distinguished from this case. [Cronyn]{.underline} involved college
students' presentations of their undergraduate theses to a defense
committee made up of four faculty members. Their theses were later
catalogued in an index in the college's main library. The index was made
up of thousands of individual cards that contained only a student's name
and the title of his or her thesis. The index was searchable by student
name and the actual theses themselves were neither included in the index
nor made publicly accessible. We held that because the theses were only
presented to a handful of faculty members and "had not been cataloged
\[sic\] or indexed in a meaningful way," they were not sufficiently
publicly accessible for the purposes of 35 U.S.C. § 102(b). [In re
Cronyn]{.underline}, 890 F.2d at 1161.

In [Hall]{.underline}, this court determined that a thesis filed and
indexed in a university library did count as a "printed publication."
The [Hall]{.underline} court arrived at its holding after taking into
account that copies of the indexed thesis itself were made freely
available to the general public by the university more than one year
before the filing of the relevant patent application in that case. But
the court in [Hall]{.underline} did not rest its holding merely on the
indexing of the thesis in question. Instead, it used indexing as a
factor in determining "public accessibility." As the court asserted:

> The \["printed publication"\] bar is grounded on the principle that
> once an invention is in the public domain, it is no longer patentable
> by anyone. . . . 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]{.underline}, 781 F.2d at 898-99.

In [MIT]{.underline}, a paper delivered orally to the First
International Cell Culture Congress was considered a "printed
publication." In that case, as many as 500 persons having ordinary skill
in the art heard the presentation, and at least six copies of the paper
were distributed. The key to the court's finding was that actual copies
of the presentation were distributed. The court did not consider the
issue of indexing. The [MIT]{.underline} court determined the paper in
question to be a "printed publication" but did not limit future
determinations of the applicability of the "printed publication" bar to
instances in which\
copies of a reference were actually offered for distribution.
[MIT]{.underline}, 774 F.2d at 1108-10.[^4]

Finally, the [Wyer]{.underline} court determined that an Australian
patent application kept on microfilm at the Australian Patent Office was
"sufficiently accessible to the public and to persons skilled in the
pertinent art to qualify as a 'printed publication.'" [In re
Wyer]{.underline}, 655 F.2d at 226. The court so found even though it
did not determine whether or not there was "actual viewing or
dissemination" of the patent application. [Id.]{.underline} It was
sufficient for the court's purposes that the records of the application
were kept so that they could be accessible to the public.
[Id.]{.underline}[^5] According to the [Wyer]{.underline} court, the
entire purpose of the "printed publication" bar was to "prevent
withdrawal" of disclosures "already in the possession of the public" by
the issuance of a patent. [Id.]{.underline}

Thus, throughout our case law, public accessibility has been the
criterion by which a prior art reference will be judged for the purposes
of § 102(b). Oftentimes courts have found it helpful to rely on
distribution and indexing as proxies for public accessibility. But when
they have done so, it has not been to the exclusion of all other
measures of public accessibility. In other words, distribution and
indexing are not the only factors to be considered in a § 102(b)
"printed publication" inquiry.

C.

The determination of whether a reference is a "printed publication"
under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts
and circumstances surrounding the reference's disclosure to members of
the public. [In re Cronyn]{.underline}, 890 F.2d at 1161; [In re
Hall]{.underline}, 781 F.2d at 899. Accordingly, our analysis must begin
with the facts of this case, none of which are in dispute.

In this case, the Liu reference was displayed to the public
approximately two years before the '950 application filing date. The
reference was shown to a wide variety of viewers, a large subsection of
whom possessed ordinary skill in the art of cereal chemistry and
agriculture. Furthermore, the reference was prominently displayed for
approximately three cumulative days at AACC and the AES at Kansas State
University. The reference was shown with no stated expectation that the
information would not be copied or reproduced by those viewing it.
Finally, no copies of the Liu display were distributed to the public and
the display was not later indexed in any database, catalog or library.

Given that the Liu reference was never distributed to the public and was
never indexed, we must consider several factors relevant to the facts of
this case before determining whether or not it was sufficiently publicly
accessible in order to be considered a "printed publication" under
§ 102(b). These factors aid in resolving whether or not a temporarily
displayed reference that was neither distributed nor indexed was
nonetheless made sufficiently publicly accessible to count as a "printed
publication" under § 102(b). The factors relevant to the facts of this
case 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. Only after considering and balancing these factors can we
determine whether or not the Liu reference was sufficiently publicly
accessible to be a "printed publication" under § 102(b).

The duration of the display is important in determining the opportunity
of the public in capturing, processing and retaining the information
conveyed by the reference. The more transient the display, the less
likely it is to be considered a "printed publication." [See,
e.g.]{.underline}, [Howmedica]{.underline}, 530 F. Supp. at 860 (holding
that a presentation of lecture slides that was of limited duration was
insufficient to make the slides "printed publications" under § 102(b)).
Conversely, the longer a reference is displayed, the more likely it is
to be considered a "printed publication." In this case, the Liu
reference was displayed for a total of approximately three days. It was
shown at the AACC meeting for approximately two and a half days and at
the AES at Kansas State University for less than one day.

The expertise of the intended audience can help determine how easily
those who viewed it could retain the displayed material. As Judge
Learned Hand explained in [Jockmus v. Leviton]{.underline}, 28 F.2d 812,
813-14 (2d Cir. 1928), a reference, "however ephemeral its existence,"
may be a "printed publication" if it "goes direct to those whose
interests make them likely to observe and remember whatever it may
contain that is new and useful." In this case, the intended target
audience at the AACC meeting was comprised of cereal chemists and others
having ordinary skill in the art of the '950 patent application. The
intended viewers at the AES most likely also possessed ordinary skill in
the art.

Whether a party has a reasonable expectation that the information it
displays to the public will not be copied aids our § 102(b) inquiry.
Where professional and behavioral norms entitle a party to a reasonable
expectation that the information displayed will not be copied, we are
more reluctant to find something a "printed publication." This
reluctance helps preserve the incentive for inventors to participate in
academic presentations or discussions. Where parties have taken steps to
prevent the public from copying temporarily posted information, the
opportunity for others to appropriate that information and assure its
widespread public accessibility is reduced. These protective measures
could include license agreements, non-disclosure agreements,
anti-copying software or even a simple disclaimer informing members of
the viewing public that no copying of the information will be allowed or
countenanced. Protective measures are to be considered insofar as they
create a reasonable expectation on the part of the inventor that the
displayed information will not be copied. In this case, the appellants
took no measures to protect the information they displayed---nor did the
professional norms under which they were displaying their information
entitle them to a reasonable expectation that their display would not be
copied. There was no disclaimer discouraging copying, and any viewer was
free to take notes from the Liu reference or even to photograph it
outright.

Finally, the ease or simplicity with which a display could be copied
gives further guidance to our § 102(b) inquiry. The more complex a
display, the more difficult it will be for members of the public to
effectively capture its information. The simpler a display is, the more
likely members of the public could learn it by rote or take notes
adequate enough for later reproduction. The Liu reference was made up of
14 separate slides. One slide was a title slide; one was an
acknowledgement slide; and four others represented graphs and charts of
experiment results. The other eight slides contained information
presented in bullet point format, with no more than three bullet points
to a slide. Further, no bullet point was longer than two concise
sentences. Finally, as noted earlier, the fact that extrusion lowers
cholesterol levels was already known by those who worked with SCF. The
discovery disclosed in the Liu reference was that double extrusion
increases this effect. As a result, most of the eight substantive slides
only recited what had already been known in the field, and only a few
slides presented would have needed to have been copied by an observer to
capture the novel information presented by the slides.

Upon reviewing the above factors, it becomes clear that the Liu
reference was sufficiently publicly accessible to count as a "printed
publication" for the purposes of 35 U.S.C. § 102(b). The 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. For these reasons, we conclude that the Liu reference was
made sufficiently publicly accessible to count as a "printed
publication" under § 102(b).

CONCLUSION

For the aforementioned reasons, the decision of the Board is affirmed.

[AFFIRMED]{.underline}

# 

[^1]: In their brief, the appellants note that there is scant
    legislative history to guide us in determining the meaning of the
    term "printed publication." Accordingly, and rightfully, they have
    based the bulk of their argument on the controlling precedent of
    this court and its predecessor court.

[^2]: Appellants acknowledge that our precedent considers the term
    "printed publication" to be a unitary concept that may not
    correspond exactly to what the term "printed publication" meant when
    it was introduced into the patent statutes in 1836. [In re
    Wyer]{.underline}, 655 F.2d at 226. Indeed, the question to be
    resolved in a "printed publication" inquiry is the extent of the
    reference's "accessibility to at least the pertinent part of the
    public, of a perceptible description of the invention, in whatever
    form it may have been recorded." [Id.]{.underline}

[^3]: While the [Cronyn]{.underline} court held "dissemination" to be
    necessary to finding something to be a "printed publication", the
    court there used the word "disseminate" in its literal sense, i.e.
    "make widespread" or "to foster general knowledge of." [Webster's
    Third New International Dictionary]{.underline} 656 (1993). The
    court did not use the word in the narrower sense the appellants have
    employed it, which requires distribution of reproductions or
    photocopies.

[^4]: 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.]{.underline}, [Regents of the Univ. of Cal.
    v. Howmedica, Inc.]{.underline}, 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]{.underline}, 676 F.2d 687 (3d Cir. 1982) (unpublished table
    decision). While [Howmedica]{.underline} is not binding on this
    court, it stands for the important proposition that the mere
    presentation of slides accompanying an oral presentation at a
    professional conference is not per se a "printed publication" for
    the purposes of § 102(b).

[^5]: Unlike in [Cronyn]{.underline}, it was the actual patent
    application---and not just an index card searchable by author name
    only---that was made publicly accessible.