Figures gremovedh from foreign patent application are
printed publications under US patent law


The United States Court of Appeals for the Federal Circuit (the gCAFCh) recently held that content gremovedh during prosecution of a foreign patent application is a gprinted publication,h making the same subject matter claimed in a subsequent US patent non-patentable on grounds of obviousness.The CAFC held that the foreign patent was a groad maph that would cause a person of ordinary skill in the art exercising reasonable diligence to locate the underlying non-indexed and non-catalogued application and view the file wrapper, including the content that had not been included in the issued foreign patent itself.



1. The Patents in Suit

The case[‚P] involved two US patents[‚Q] claiming inventions made by Mark Bruckelmyer. The patents disclosed a method to thaw frozen ground so that concrete could be laid on top of it, thus allowing the concrete to harden evenly and not crack when the ground settles later. The method disclosed in the patents involved placing rubber hoses on the ground around a concrete form. Liquid circulated through the hoses thaws the ground and prevents the concrete from hardening too quickly.

On July 20, 1995, Bruckelmyer filed an application that led to the issue of one of the patents in suit. On July 17, 1996, he filed a continuation-in-part that issued as the other patent in suit. On July 15, 2002, Bruckelmyer sued Ground Heaters for infringement of the patents. Ground Heaters counter claimed, and based on the argument that two figures in a prior Canadian application had rendered the subject matter of the patents in suit obvious, sought a summary judgment that the patents were invalid.


2. The Canadian Application

On May 7, 1982, a patent application was filed with the Canadian Patent Office. A patent[‚R] issued on December 6, 1983. The Canadian patent disclosed (1) a portable heating system that placed flexible hoses gin close proximity to objects of various shapes and configurations which would otherwise be difficult to heat,h and (2) a method of heating structures by having preheated liquid flow through flexible hoses. The Canadian patent stated that the primary object of the invention was gto provide an improved method of applying heat to fresh concrete which has been placed in a pre-constructed framework during extreme cold weather.h The Canadian patent also stated that the system was gsuitable for applying heat to other subjectsc.Other typical uses are: ...thawing frozen ground.h The Canadian patent contained drawings of the claimed system, but, important to Bruckelmyerfs appeal before the CAFC, omitted two figures illustrating the use of the system to thaw frozen ground. The two figures were in the file wrapper available from the Canadian Patent Office, but were not disclosed in the patent because they were gcancelledh during prosecution.



3. The Trial Court Findings

The trial court found that the Canadian application was a gprinted publicationh for purposes of US patent law[‚S], but denied the defendantfs motion for summary judgment of patent invalidity, finding there was a genuine issue of material fact regarding whether the two figures would have enabled a person of ordinary skill in the art to practice the inventions claimed in the patents in suit without undue experimentation.

After the trial courtfs finding that the Canadian application was a printed publication, the patentee stipulated that the two figures rendered the claims of the patents in suit invalid, thus removing from dispute any question of fact as to whether the two figures were enabling to a person ordinarily skilled in the art. The defendant then filed a renewed motion for summary judgment for invalidity. The trial court granted the motion, and the patentee appealed to the CAFC.

The legal issue on appeal to the CAFC was whether the two figures in the Canadian application were gprinted publicationsh under US patent law.



4. The Patenteefs Arguments

The patentee conceded that the two figures in the Canadian file wrapper were enabling for purposes of US patent law. Nevertheless, the patentee argued that they were not printed publications because they had been gcancelledh from the application. The patentee asserted that for a reference to be a gprinted publicationh under US patent law it must be gpublicly accessible.h The patentee further argued that a patent application located in a foreign patent office is not gpublicly accessibleh simply because the application had been laid open for inspection during the relevant prior art period.

The patentee elaborated, arguing that previous CAFC cases had held that for prior art to be gpublicly accessible,h it 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.

The patentee noted that the defendant had produced no evidence that the contents of the Canadian file wrapper had been disseminated, and no copies were known to have been sent anywhere during the prior art period. The patentee also contended that because the Canadian Patent Office had not indexed or catalogued the application, and because no printed abstract of the patent had been classified and published, a person of ordinary skill in the art would not have been able to locate in a meaningful way the two figures gremovedh from the application.



5. The Defendantfs Response

The defendant responded that although (1) the Canadian application had not been formally indexed; (2) no abstract had been classified or published; and (3) there was no evidence that the Canadian application with the two figures had actually been disseminated during the prior art period, a person of ordinary skill in the art would have been able to locate the figures in the application file by using the Canadian patent itself.

The defendant further argued that the language in the Canadian patent that the claimed system gis suitable for applying heat to other objects and is not necessary confined to use in relation to concrete placementc. Other typical uses are:c thawing frozen groundh was sufficient to lead one ordinarily skilled in the art exercising reasonable diligence to the Canadian application, and to the two figures in the file wrapper.

The defendant argued that the fact that there was no abstract of the Canadian patent was irrelevant. The patent itself was indexed and catalogued according to its subject matter, and the underlying application, with the two gcancelledh figures, was on file at the Canadian Patent Office.



6. The CAFC Holding

The CAFC affirmed the trial courtfs finding of patent invalidity, holding that the Canadian application was gpublicly accessibleh and therefore amounted to a gprinted publicationh under US patent law[‚T]. The CAFC noted prior case law holding that a reference is gpublicly accessibleh upon a satisfactory showing that it has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it and recognize and comprehend the essentials of the claimed invention without need of further research or experimentation[‚U].

Although the Canadian application had not actually been disseminated, the CAFC determined that a person of ordinary skill in the art interested in the subject matter of the patents in suit would have been able to locate the application, and the figures that had been gcancelledh from the patent. Therefore, the application and the contents of the file wrapper were gpublicly accessible.h The CAFC noted that a prior case[‚V] had held that abstracts of foreign patents were sufficient to meet the gpublicly accessibleh requirement, and found that the fully published Canadian patent was an even better groadmaph to the file. Whether the Canadian application had been catalogued or indexed gin a meaningful way,h was unimportant because the Canadian patent itself was indexed and could serve as a research aid.



7. A Dissenting Opinion

A dissenting opinion suggested that an abstract is a summary of technical information -- a tool to steer researchers to a larger and more comprehensive work, while a patent itself is not a groadmaph to the underlying file history or subject matter not described in the issued text. The dissent also argued that the two figures had not been gcatalogued or indexed in a meaningful wayh because there was nothing in the text of the Canadian patent to suggest that a structure for implementing the use claimed in the patents in suit would have been found in the Canadian file wrapper.



[‚P]@Mark Burckelmyer v. Ground Heaters, Inc., and T.H.E Machine Company, No. 05-1412 (Fed. Cir., decided April 20, 2006).

[‚Q]@The patents were US Patent 5,567,085 and 5,820,301.

[‚R]@Canadian Patent 1,158,119.

[‚S]@35 USC Sec. 102 (b).

[‚T]@35 USC Sec. 102 (b).

[‚U]@In re Wyere, 665 F.2d 221, 226 (CCPA 1981).

[‚V]@In re Wyere, 665 F.2d 221, 226 (CCPA 1981).






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