Recent test takers report a Titanium/Museum Baseball Question in the Prometric database. Actually, there are two variants of this question which, in my opinion, supports that this question is or was a beta test. The first variant displays a baseball in a museum (public use), while the second (and more recent) variant displays a brochure about a baseball (printed publication).
Variant 1 – Baseball Displayed (public use)
Test takers report a question involving a baseball and accompanying article about a special titanium baseball put on public display in a museum. Is it public use if only “wealthy museum patrons who have no interest or skill to make baseballs” see it? Or is it public use when the general public sees it, or people who have the interest/skill to make baseballs can see it? In other words, is something public use if ONLY the people having skill in the art can see it?
- June 20: Article printed, not distributed at all
- June 25: put in library open only to wealthy museum patrons, none of whom have skill in the art
- June 30: Museum library opens to public
- July 1: TV advertisement of grand opening of museum library
- July 4: Grand opening
Variant 2 – Baseball Not Displayed (printed publication/prior art)
This question explicitly states that a brochure about a baseball is given to the museum (which gives you a tricky red herring date for cataloguing and indexing the brochure).
Article is published on Date 1 though not distributed. Article is put on display at museum on Date 2, museum is only accessed at this time by wealthy museum patrons who don’t have the skills to make baseballs (but the museum is a baseball museum). On Date 3, museum has a big PR event with news media etc. On Date 4 (July 4th), articles in museum are indexed and sorted. Which date is the prior art date of the publication?
ANSWER
So far no one has reported a certain fact pattern, and there appears to be at least two variants; so to answer this question, distinguish if it is a public use or printed publication. Prior art date and public use date are two entirely separate issues. If the question asks for prior art date (Variant 2), then the answer is the date it is indexed and cataloged so someone can actually find it. If the question asks for the date of first public use (Variant 1), then the answer is the date the thing was displayed for museum patrons to see it, regardless whether the museum is semi-private.
DISCUSSION
Variant 1 (public use argument) –
Just go to the MPEP and read the section with Blaisdell and Kuklo (display in a laboratory constituted public use; doesn’t have to be displayed to those skilled in the art; and no need for all inner workings to be shown), and you’ll see what they’re testing. [MPEP 2133.03(a) II A. 2] There were different times when the reference could have gone into effect; in this case the baseball was displayed to the museum members over a year before the filing date of the application. Thus, it’s a 102(b) bar, due to the “public use” beginning when it was displayed to members of the museum.
Compare to Moleculon (the rubix cube case) where the inventor did not cause a public use by leaving the cube on his desk.
Variant 2 (printed publication argument/prior art) –
This is not a public use under 102(b) because it is not a use of the invention at all. A reference is proven to be a “printed publication” “upon a satisfactory showing that such document 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.” In re Wyer, 655 F.2d 221, I just took the exam and my analysis turned the question upon the date of Date 4, which is when the library was indexed, cataloged, and shelved. Based on the section in the MPEP, that’s what makes the date critical.
MPEP 2128.01, IV. 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 35 U.S.C. 102(b), the court considered the following factors: “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.” (Note that “printed publication” as used above applies to 102(a) as well.)
AND THE USPTO SAYS
There’s a good argument for it being prior art as soon as it’s available to ANY member of the public (even if just wealthy museum patrons) as per the Thesis-on-Library-Shelf case mentioned in 2100. However, another line of court cases mentioned in the same passage distinguishes from this argument, though it doesn’t overrule it, saying that the more appropriate inquiry is when one with skill in the art would reasonably be capable of accessing the publication. The question explicitly says that the wealthy museum patrons are people who do NOT have skill in the art.
Someone who went to the MPEP to check his wrong answers learned that the July 4 date (which I think corresponded to a shelving in a library) was the appropriate prior art date; the dates may have changed, as it seems odd to me that the prior art date would not at the very least be TV advertisement (though I’m inclined to think the answer is when the library opened to the public).
From the Forum – “Also, there has been much dispute about the titanium baseball question. I chose the date when the museum opened. I believe this answer to be correct due to the facts given and the way the question was worded. Someone mentioned that there was a difference between “public use” and “prior art date” of a reference. I believe the call of the question was directed at what was the prior art date. Make sure you read the call of the question carefully in selecting your answer as there have been known to be variants in the exam. “
I got the publication of the titanium baseball. I answered that the baseball had public use as of the date it was catalogued and indexed, not any of the dates prior to that where there were museum patrons, or where it was the grand opening.
– I passed the exam.
I got this question yesterday on my exam… my version asked when the article is available as a prior art.. chose the last date, july 4th (indexed and cataloged), passed..
I also got this question yesterday. The facts were a little different than above – June 30 was grand opening, July 1 was TV advertisement, and July 4 was the day everything in the library was indexed and cataloged. Question was what day the article is prior art. June 30 was NOT an answer choice. I chose July 4.
Would an advertisement count as public use (display) if that was a choice?
I got the question today. It was about a printed publication regarding the baseball. The first date was the printing of the publication (but no distribution). the next date was the display of the publication in the library of the baseball museum, only open to the wealthy. The next date was when they decided to open it to the public. The next date was when it was the actual grand opening of the library. the final date was the indexing.
This is the exact version of the fact pattern when I took the exam in September.
Isn’t the exposure to a group whose composition is uncontrolled, except for their wealth, a probe of the following two passages from the MPEP?
2133.03(a)
The person to whom the invention is publicly disclosed need not understand the significance and technical complexities of the invention.).
2132
Court held that the inventor retained control and thus these actions did not result in a “public use.”).
Thanks, Art Williams
I believe the Q asks what precludes the issuance of the patent. this is a 102(a) vs 102(b) Q. I have a variant of this Q in my Q bank wherein a guy makes the titanium ball and gives a brochure of it to his friend who works at the msueum and then all the same events happen. The publication date of the brochure is the date it is catalogued. However, since mpep 2132.01 says “Applicant’s disclosure of his or her own work within the year before the application filing date cannot be used against him or her under 35 U.S.C. 102(a)”…the answer option to choose is that a patent can be filed if done before the 1 yr mark from the date of cataloging.
For variant 1:
2133.03(a) II 4.
Bernhardt, 386 F.3d at 1381, 72 USPQ2d at 1909. For example, the court in Bernhardt noted that an exhibition display at issue in the case “was not open to the public, that the identification of attendees was checked against a list of authorized names by building security and later at a reception desk near the showroom, that attendees were escorted through the showroom, and that the attendees were not permitted to make written notes or take photographs inside the room.
Then clearly if the question was that of public use, the display to museum patrons will not be public issue.
Somebody pl correct me, if I am wrong.
Thank you.
This is how I see it:
The prior art date enters if there is something in print about it. A museum catalog, a technical article. Something in writing with a date.
Public use is everything which makes it visible to more than you. If it is visible in a controlled access situation, then there is a fine line. How controlled is it? If the audience understands that it is confidential and what a purpose of the showing may be, then it is not public use. But if it just sits there to be looked at, then it is. So in the semi-private museum, there is no expectation of privacy, just like a party with invided guests only.
※ Prior art date and public use date are two entirely separate issues.
* If the question asks for prior art date,
then the answer is the date it is indexed and cataloged so someone can actually find it.
* If the question asks for the date of first public use,
then the answer is the date the thing was displayed for museum patrons to see it, regardless whether the musuem is semi private.
Titanium variant2
Why is Date1 not a prior art date? Date1 is when the article was published.
Article is published on Date 1 though not distributed.
Since it is not distributed, level of accessibility would be questionable.
2128.01
III. Internal documents intended to be confidential are not “Printed Publications”.
But on the other hand, something that is indexed and cataloged is definitely a “printed publication”. Hence the answer.
I saw this question on the test last week. I think the answer is when the document was shown to the rich patrons of the museum.
The issue is whether or not a temporary displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly assessable to count as a “printed publication” under 102(b) – In re Klopfenstein
r/l: (i)distribution and indexing are not the only factors to be considered under 102(b) printed publication inquiry; (ii) could qualify as printed publication if sufficiently accessible to the public interested in the art (one of the factors is expertise of the target audience)
but the question is whether the wealthy museum patrons had sufficient expertise to appreciate the invention, if yes, then the correct answer is B, date 2 when the wealthy museum patrons saw the article – most likely, however, wealthy patrons did not have required expertise
which date is the prior art date of the publication? The correct answer is D: date 4 when article is catalogued and published –July 4th
I PICKED JULY 4 when the article was indexed and catalouged
Hi Guys,
I came across one of the fact patterns for this question see below:
In January, 2003, Lefty invented a baseball having a titanium core and wrote a typewritten paper fully describing his invention and how to make it. On March 1, 2003, Lefty gave the paper to a friend of his who was a member of a private baseball museum which was open only to members, not to the public in general. The members of the club were wealthy individuals who were baseball fans, but had no interest in the design, development, manufacture, use, or sale of baseballs. On March 15, 2003, Lefty’s friend took the paper to the museum and placed it in the library of the museum, catalogued under Lefty’s name, where several members saw it between March 15 and March 31, 2003. In January, 2004, the directors of the museum decided to open the museum’s library to the general public beginning on May 1, 2004, in hopes of attracting additional members. In preparation for that opening, during the month of March 2004 the books, periodicals, papers, and articles in the library, including Lefty’s, were catalogued according to subject matter and placed on the shelves of the library where they became available to the general public on May 1, 2004. On April 2, 2005, Lefty consulted a registered patent practitioner about filing a patent application on his invention. Which of the following is the advice that the practitioner should give to Lefty concerning patentability of his invention?
(A) Lefty cannot obtain a valid U.S. patent on his invention, because the knowledge of Lefty’s invention by the members of the museum who read and discussed Lefty’s paper in March 2003 constitutes “known … by others” within the meaning of 35 USC §102(a).
(B) Lefty cannot obtain a valid U.S. patent on his invention, because the placing of Lefty’s paper in the museum’s library on March 15, 2003, where it was available to the members of the museum, rendered the paper a “printed publication” within the meaning of 35 USC §102(b).
(C) Lefty cannot obtain a valid U.S. patent on his invention, because the cataloguing and shelving of Lefty’s paper in the museum’s library in March 2004 rendered the paper a “printed publication” within the meaning of 35 USC §102(b).
(D) 35 USC §102(b) will not preclude the issuance of a valid U.S. patent on Lefty’s invention, so long as an application is filed in the USPTO prior to May 1, 2005, because Lefty’s paper did not become a “printed publication” until the museum library was opened to the general public on May 1, 2004.
(E) Lefty cannot obtain a valid U.S. patent on his invention, because the opening of the museum library to the public on May 1, 2004, together with the prior cataloguing and shelving of Lefty’s paper, rendered the paper a “printed publication” within the meaning of 35 USC §102(a).
Answer: D
35 USC §102(a) is inapposite because the four patent-precluding events set forth in §102(a) must occur prior to the applicant’s invention in order to preclude patentability. See, e.g., MPEP §2132.01 (“Applicant’s disclosure of his or her own work within the year before the application filing date cannot be used against him or her under 35 U.S.C. 102(a)”), and MPEP §2136.05 (“even if applicant’s work was publicly disclosed prior to his or her application, applicant’s own work may not be used against him or her unless there is a time bar under 35 U.S.C. 102(b)”). Answer option A. is therefore incorrect because the knowledge of Lefty’s invention by the members of the museum came from Lefty’s disclosure of his invention to them, which necessarily came after Lefty’s invention. Answer options B. and C. are incorrect because a document in a library does not constitute a patent-barring “printed publication” unless the library was open to the interested public and the document was catalogued according to subject matter more than a year before the filing date of the application. Answer option E. is incorrect because a “printed publication” within the meaning of 35 USC §102(a) must have occurred prior to the applicant’s invention. Lefty’s article describing his invention could not have been published prior to his date of invention.
The interesting thing about this fact pattern is the question does not ask about public use under 102b, which in my opion would have occured when the patrions got access to the paper between March 15-31, but how Lefty will be precluded from patentablity by a “printed publication” under 102b. Therefore answer D is the “leaset incorrect” of all the answer choices, because he still may not obtain a patent.
Hope this helps
Alex
Thanks Alex, this helps so much in determining the actual answer.
Doesn’t public use mean actual use of the invention though? Is the invention technically being used by sitting in a museum? I would understand if it was distributed to a minor league baseball team to use, but just sticking it in a museum for people to look at isn’t actual “use” is it?
MPEP2128–” available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” will make a 102(a).
Therefore my concusion is
1. For a publication in library, audience must be those with interest to make a publication 102(a). The question posted by Alex clearly states that “The members of the club were wealthy individuals who were baseball fans, but had no interest in the design, development, manufacture, use, or sale of baseballs.” Therefore the paper is not 102(a). IF without this statement, it will became 102(a) on Jan 2004, when being catalogued under subject.
2. . For public display/uese, any audience, no matter with interest or not, will make it 102(b), of course the timemust be more than one eyar ago. As in variant 1.
any comments?
To qualify public use, the display should be a display of the invention, the baseball, not the paper.
Also, I don’t quite agree that public use date and prior art date are mutually exclusive. In my opinion, public use is a type of prior art, and public use date is a type of prior art date.
Sol, wouldn’t you think that in order for public use to occur, the baseball would have to be used during a baseball game (natural and intended use) rather than just being displayed?
Can someone explain the difference between 102(a) “use” and 102(b) “use”?
I have the same question about “use”, used in its natural intended way or not? Here I am only sure a display of a paper describing the base ball is in no way a use of the base ball, regardless in its natural/intended way or other use.
Alex, I think I agree with you. I don’t see how the disclosure of the work more than a year before the filing of the patent doesn’t create a bar under 102(b)either.
Also, where exactly did you get this question from?
Reporting another a 102 variant on 8/11/10.
Same basic question, EXCEPT: Pamphlet only described the ball and its uses, steps = first pamphlet to museum, placed in museum, museum=open to public, but only wealthy members, but not open to general public (WTF is open to public but not general public…the Q is screwy), opened museum to general public, then grand opening, then indexed.
Question was then which date would be 102 prior art. I answered, date of indexing. Passed exam.
Reasoning: First, the pamphlet is his own, so no 102(a). First, open to the wealthy unsophisticated public is not enabling enough to be prior art due to skill level of the audience. Next, on public opening, mere public knowledge is not enough to satisfy public use under 102(b). Public use must be on display in its “natural and intended way” MPEP 2133.03(a)(II). I am not sure a pamphlet of a baseball that merely “describes it and its uses” satisfies either “on display” or “natural and intended way.”
Therefore, answer is the date of indexing, making it a 102(b) publication.
I took the test yesterday and I agree with Kevin, there was a much more difficult variant of the question. It asked what the prior art date was, not whether it would be available as prior art.
Also (like Kevin) the question was screwy as hell, it opened the museum to public, but the part was closed, then members were allowed in, but they had no prior knowledge in the art. Then, the general public was let in, but only allowed to see the publication.
I’m pretty sure the trick to this question was that it didn’t ask what was the EARLIEST filing date, it just asked which would be a filing date. I think they tried to trick people here because we’re so used to see questions that ask which is the earliest filing date. So we all know that the indexed and cataloged date is DEFINITELY a 102(b) publication. THAT’S THE KEY TO THIS QUESTION, IMO.
Related question oct 2002 am # 17
17. Which of the following statements is true?
(A) In the context of 35 USC 102(b), a magazine need only be placed in the mail to be effective as a printed publication.
(B) The earliest date declassified printed material may be taken as prima facie evidence of prior knowledge under 35 USC 102(a) is as of the date the material is cataloged and placed on the shelf of a public library.
(C) Declassified printed material is effective as a printed publication under 35 USC 102(b) as of the date of its release following declassification.
(D) The American Inventors Protection Act (AIPA) amended 35 USC 102(e) to provide that U.S. patents, U.S. application publications, and certain international application publications can be used as prior art under 35 USC 102(e) based on their earliest effective filing date only against applications filed on or after November 29, 2000.
(E) The American Inventors Protection Act (AIPA) amended 35 USC 102(e) to provide that U.S. patents, U.S. application publications, and certain international application publications can be used as prior art under 35 USC 102(e) based on their earliest effective filing date only against applications filed prior to November 29, 2000 which have been voluntarily published.
Answer is (c). Available “as prima facie evidence of such prior knowledge as of its printing date even though such material was classified at that time.”
Clarification…MPEP § 707.05(f) states, “In the use of [declassified material] …
as an anticipatory publication, the date of release following declassification is the effective date
of publication within the meaning of the statute.”
One more that is related:
April 2000 am
34. You have just received an Office action rejecting all of your claims in your patent application as anticipated under 35 U.S.C. § 102(a) using published declassified material as the reference. The examiner explains that the declassified material is being used as prima facie evidence of prior knowledge as of the printing date. The published declassified material contains information showing that it was printed six months before the filing date of the application, and that it was published two months after the application’s filing date. You correctly note that although the printing date precedes your application filing date by six months, you note that the publication was classified as of its printing date (thus, available only for limited distribution even when the application was filed), and was not declassified until its publication date (when it became available to the general public). Each element of the claimed invention is described in the publication of the declassified material. Which of the following statements is true?
(A) The rejection is not supported by the reference.
(B) The publication is not available as a reference because it did not become available to the general public until after the filing date of your patent application.
(C) The publication is prima facie evidence of prior knowledge even though it was available only for limited distribution as of its printing date.
(D) The publication constitutes an absolute statutory bar.
(E) It is not possible to use a Rule 131 affidavit or declaration to antedate the printing date of the publication.
34. ANSWER: (C). As stated in MPEP § 707.05(f), “For the purpose of anticipation predicated upon prior knowledge under 35 U.S.C. 102(a), the above noted declassified material may be taken as prima facie evidence of such prior knowledge as of its printing date even though such material was classified at that time.” (A) is incorrect. The reference supports the rejection inasmuch as each element of the claimed invention is disclosed in the reference. (B), (D), and (E) are not the most correct. MPEP § 707.05(f).
In regards to 17 above, (B) is wrong. MPEP § 707.05(f)
states, “For the purpose of anticipation predicated upon prior knowledge under 35 U.S.C. §102(a) the above noted declassified material may be taken as prima facie evidence of such prior knowledge as of its printing date even though such material was classified at that time.”
I got varant 2 of the T baseball question today (1-25-2011) on my exam. I answered publication was prior art when it was cat / indexed on shelves.
Got variant 2 today. Very odd because I looked it up and apparently the BPAI has had conflicting rulings on this. In particular, I remember reading about two judges believing that simply putting the article in the library is not enough to make it available to one with ordinary skill in the art with interest to find it, and another judge believing that even if not catalogued/indexed is enough. I remember reading about the July 4 date being the correct one here and went with that.
Got the baseball variation #2 today. Which date is the brochure prior art? I chose the July 4th date (day it was indexed, I passed, who knows if I got this particular question correct). I chose this date over the date that the brochure was given to the museum, b/c in my fact pattern it was not stated that the museum placed the brochure in a place in which the public could access the document. For all we know, the museum could have placed the brochure in a box in the basement. At the end of the question, the writers make explicit for the first time that the brochure is being indexed and catalogued and thus definitely available to the public. Poorly written question no matter how you look at it.
I also got this question on 2/7, chose indexed date, and passed. I wanted to go with the date of the grand opening, but that wasn’t an answer choice. So I figured to go with the indexed date as that is clearly correct, and any earlier date would have just been a guess…so I thought it was better to pick something I know is right rather than pick a plausible but maybe wrong earlier date.
I agree with Ve and Brandon if you get the printed publication variant of the question. The date is for sure July 4 because I checked it in the PTO.
I was wondering for variant 1 (public use) of the question, did we all agree it was the following date:
June 25: put in library open only to wealthy museum patrons, none of whom have skill in the art
Got variant 2, picked 7/4 and passed on 2/17
I had this today and selected July 4.
I had this on today’s exam and chose July 4th as priority date because that’s when it was indexed.
I think the key to public access test to determine publication date for 102(a)/(b) purpose is accessibility to any member of the public. If the library is just open to wealthy patrons, that’s probably not public accessible within the meaning of the public access under 102(a)/(b) identity rule. That said, I think this is really a poor fact pattern. How long is the article? Could it be remembered by anybody who read it ?
As to the public use variant, the 2133 II A.2 has a large qualification “if the invention is otherwise used in its natural and intended way and the larger machine or article is accessible to the public”. Is the baseball, sitting on a museum display, used in its natural and intended way? Again poor fact patten.
Anyone had this more recently?
Seems like people have only been getting Variant 2 (july 4th, cataloged/indexed). Has anyone gotten variant 1 (public use)? what is the answer to that one?
If a base ball is displayed in a museum open to the public, is it in public use? Does Public Use have to be a use in its intended/natural way? Like, the base ball is used in a baseball game or practice.
Also, is there any difference between 102(a) used by others and 102(b) public use? On words only, I can imagin secret use by others is still 102(a) use but not 102(b) public use.
A publlicly displayed document is a printed publication once persons f ordinary skill in the art could see it……the reference of prior art would be the grand opening, when people of OSIA could access it.
2128.01, w
Seriously, this site does more harm than good if you don’t back up your thoughts with actual MPEP text. YOU ARE WRONG if you think that the publication has to be indexed:
IV. PUBLICLY DISPLAYED DOCUMENTS
CAN CONSTITUTE A “PRINTED
PUBLICATION” EVEN IF THE DURATION
OF DISPLAY IS FOR ONLY A FEW DAYS
AND THE DOCUMENTS ARE NOT
DISSEMINATED BY COPIES OR INDEXED
IN A LIBRARY OR DATABASE
A publicly displayed document where persons of
ordinary skill in the art could see it and are not
precluded from copying it can constitute a “printed
publication,” even if it is not disseminated by the
distribution of reproductions or copies and/or
indexed in a library or database.