In In re Klopfenstein (Fed. Cir. August 18, 2004), the Federal Circuit held that a printed slide presentation was sufficiently publicly accessible to justify denial of a patent application under the “printed publication” bar, where over a year before the filing date the invention had been displayed for an extended period of time to members of the public having ordinary skill in the art without any restriction on their copying.

***NOTICE of September 26, 2011: a number of changes have occurred in the patent landscape subsequent to the preparation of the post below, as noted at Patent Eligibility and Reform.***

Klopfenstein had filed a patent application that disclosed methods of preparing foods comprising extruded soy cotyledon fiber (“SCF”).  Part of the disclosure was already known by those of ordinary skill in the art who worked with SCF, namely, that feeding mammals foods containing extruded SCF may help lower the serum cholesterol levels while raising the HDL cholesterol levels.  The purported novelty came from the disclosure that double extrusion increased this desired effect and yielded even stronger results.

An issue arose whether Klopfenstein’s printed slide presentations displayed to the public approximately two years before the patent application filing date had triggered the “printed publication” bar under 35 U.S.C. § 102(b):

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless…(b) the invention was…described in a printed publication in this or a foreign country…, more than one year prior to the date of the application for patent in the United States.

The Patent Examiner asserted the presentations did constitute barring “printed publications” and rejected Klopfenstein’s patent claims as anticipated by the presentations or obvious in view of the presentations and other references.  Upon appeal by Klopfenstein, the Board of Patent Appeals and Interferences affirmed the decision of the Patent Examiner.  Klopfenstein then appealed to the Federal Circuit.

The Federal Circuit noted that the determinations whether references are “printed publications” under 35 U.S.C. § 102(b) involve case-by-case inquiries.  In reviewing the facts and circumstances surrounding Klopfenstein’s disclosures to the public, the Federal Circuit highlighted the presentations were:

• prominently displayed for approximately three cumulative days
• shown to a wide variety of viewers, a large subsection of whom possessed ordinary skill in the art of cereal chemistry and agriculture
  • American Association of Cereal Chemists meeting
  • Kansas State University’s Agriculture Experiment Station
• shown with no stated expectation that the information would not be copied or reproduced
• made up of fourteen separate slides:
  • a title slide; an acknowledgement slide; four slides that represented graphs and charts of experimental results; and eight slides that contained information presented in bullet point format, with no more than three bullet points to a slide, and no bullet point being longer than two concise sentences
• not distributed to the public in the form of copies
• not indexed in any database, catalog, or library

To resolve whether Klopfenstein’s temporarily displayed presentations that were neither distributed nor indexed were nonetheless made sufficiently publicly accessible to count as “printed publications” under § 102(b), the Federal Circuit considered the following factors:

• length of time the display was exhibited, as an indication of the opportunity the public had to capture, process, and retain the information
• expertise of the target audience, as an indication of how easily those who viewed the presentation could retain the displayed material
• existence, or lack thereof, of reasonable expectations that the material displayed would not be copied
  • professional and behavioral norms may entitle a party to a reasonable expectation that the information displayed will not be copied, for example, helping to preserve incentives for inventors to participate in academic presentations or discussions
  • parties may take steps to prevent the public from copying temporarily posted information such as through 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
• simplicity or ease with which the material displayed could have been copied

The Federal Circuit found the facts and circumstances surrounding Klopfenstein’s disclosures clearly demonstrated that the presentations were sufficiently publicly accessible to count as “printed publications” under 35 U.S.C. § 102(b).  The presentations were shown for an extended period of time to members of the public having ordinary skill in the art of the invention.  Those members of the public were not precluded from taking notes or even photographs of the presentations.  The simplicity of Klopfenstein’s presentations made it more likely that members of the public could learn the novelty by rote or taking notes adequate for later reproduction:

• most of the eight informational slides were directed to the fact that extrusion desirably affected cholesterol levels, which was already known
• only a few of the slides would have needed to have been copied to capture the novelty that double extrusion increases this effect

Therefore, ruled the Federal Circuit, Klopfenstein’s presentations constituted prior art appropriate for rejection of Klopfenstein’s patent claims.

Recommendations:

• Have close coordination with counsel in protecting your rights to inventions and in reviewing potentially public disclosures in advance of patent application filing dates, including:
  • careful control of the public accessibility to disclosures
    • minimize the content to only what is necessary
    • limit the duration of exposure
  • notification in public presentations that no copying is permitted
  • upon discovery of unintentional public disclosures or public disclosures occurring without patent guidance, early review of the facts and circumstances surrounding the disclosure and the steps needed to protect prospective rights
• To evaluate the enforceability of issued patent claims of interest to you:
  • attention must be given to the facts and circumstances surrounding any public disclosure of the invention in advance of the patent application filing date
  • keep in mind that many or all international patent rights may be lost upon the public disclosure of an invention any length of time, even less than one year, before a patent application filing date

August 31, 2004

Text Copyright © 2004 Bob Brill et al. and Notice Copyright © 2011 Bob Brill

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