Q) Publications as References (10.03.29a)

by admin on April 9, 2010 · 1 comment

in Exam Questions

Test takers report a #29 from the October 2003 (AM) patent bar exam is in the current question pool.

29. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following statements regarding publications as references is incorrect?
(A) A doctoral thesis indexed and shelved in a library can be sufficiently accessible to the public to constitute prior art as a printed publication.
(B) Evidence showing routine business practices is never sufficient to establish the date on which a publication became accessible to the public.
(C) A paper which is orally presented in a forum open to all interested persons can constitute a “printed publication” if written copies are disseminated without restriction.
(D) Documents distributed only internally within an organization, which has an existing policy of confidentiality or agreement to remain confidential are not “printed publications” even if many copies are distributed.
(E) A publication disseminated by mail is not available as prior art until it is received by at least one member of the public.

ANSWER: (B) is the most proper answer. MPEP § 2128.02, under the heading “Date of Accessibility Can Be Shown Through Evidence of Routine Business Practices,” states, in reliance upon Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), cert. denied, 988 U.S. 892 (1988), and In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986), “Evidence showing routine business practices can be used to establish the date on which publication became accessible to the public. Specific evidence showing when the specific document actually became available is not always necessary.” Answer (A) is incorrect. MPEP § 2128.01, under the heading “A Thesis Placed In A University Library May Be Prior Art If Sufficiently Accessible To The Public,” states “[a] doctoral thesis indexed and shelved in a library is sufficiently accessible to the public to constitute prior art as a ‘printed publication.’ In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). Even if access to the library is restricted, a reference will constitute a ‘printed publication’ as long as a presumption is raised that the portion of the public concerned with the art would know of the invention. In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978).” Answer (C) is incorrect. MPEP § 2128.01, under the heading “Orally Presented Paper Can Constitute A ‘Printed Publication’ If Written Copies Are Available Without Restriction,” states, in reliance upon Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985): “[a] paper which is orally presented in a forum open to all interested persons constitutes a ‘printed publication’ if written copies are disseminated without restriction.” Answer (D) is incorrect. MPEP § 2128.01, under the heading “Internal Documents Intended To Be Confidential Are Not Printed Publications,” states, in reliance upon In re George, 2 USPQ2d 1880 (Bd. Pat. App. & Int. 1987), Garret Corp. v. United States, 422 F.2d 874, 878, 164 USPQ 521, 524 (Ct. Cl. 1970), and Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990). “[d]ocuments anditems only distributed internally within an organization which are intended to remain confidential are not ‘printed publications’ no matter how many copies are distributed.” Answer (E) is incorrect. MPEP § 2128.02, under the heading “A Journal Article or Other Publication Becomes Available As Prior Art on Date of It Is Received by a Member of the Public,” states, in reliance upon In re Schlittler, 234 F.2d 882, 110 USPQ 304 (CCPA 1956): “[a] publication disseminated by mail is not prior art until it is received by at least one member of the public.”

1 DaveNo Gravatar February 3, 2011 at 12:21 am

There’s another variant of this question VERY but in the positive instead of negative. The answer to that one is basically what is recited here for D. I can’t stress it enough — make sure you read the question and all answers.

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