Appeal No. 2005-2512
Reexamination Control No. 90/006,431
it and recognize and comprehend therefrom the essentials of the claimed invention
without need of further research or experimentation.” Bruckelmyer, 445 F.3d at 1378,
78 USPQ2d at 1687; Wyer, 655 F.2d at 226, 210 USPQ at 795. As the record does not
include any evidence establishing when, if ever, RailMIll Tutorial was disseminated or
otherwise made available to persons skilled in the art, it has not been shown to be
available as a prior-art printed publication against appellant’s claims.
4. Summary
None of the RailMill documents has been shown to be available as a prior-art
printed
publication against appellant’s claims.
H. Whether any of the subject matter in the RailMill documents, the Arcadia
Manual,
Tiwary, and Deng has been established to be the invention of Ho and Tuan
In the interest of completeness, this analysis assumes that the RailMill
documents have
publication dates prior to appellant’s filing date, as do the Arcadia Manual, Tiwary, and
Deng.
In order to remove reference subject as prior art on the ground it represents the
applicant’s own invention, the applicant (or patent owner during reexamination) must
prove invention and derivation of that subject matter. See In re Facius, 408 F.2d 1396,
1407, 161 USPQ 294, 302 (CCPA 1969) (“The real question is whether, in
addition to establishing derivation of the relevant disclosure from himself, appellant has
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