Appeal 2007-2128
Application 09/757,006
on a removable storage medium such as a DVD or CD was well
known in the art.
OPINION
The Examiner rejects claims 85, 86, 88, and 89 under 35 U.S.C.
§ 102(b) as being anticipated by MS Win. The statement of rejection refers
to “Screen Dumps” as comprising the evidence of unpatentability, and seems
to address the evidence as if a “printed publication” under § 102(b). The file
copy of the “Screen Dumps” depicts copyright years ranging from 1981 to
1998, which we regard as prima facie evidence that the printed copies
provided by the Examiner, which were presumably printed during
prosecution of the instant application, were printed or printable (i.e.,
sufficient to place the invention in public possession) in their present form at
least prior to 1999. The “Screen Dumps” could also serve as evidence of
public use or sale in this country more than one year prior to the date of
application for patent, which are two separate bars to patentability under
§ 102(b) that are distinct from printed publications.
The printed copy of screen dumps do not qualify as prior art under
§ 102, but provide evidence of unpatentability under § 102(b). For
demonstrating prima facie unpatentability, the rules of evidence are
somewhat relaxed in the instant ex parte proceedings. For example, hearsay
statements in a document that is not “prior art” may be relied upon to
establish facts necessary to support a rejection in ex parte examination. See
In re Epstein, 32 F.3d 1559, 1567, 31 USPQ2d 1817, 1822 (Fed. Cir. 1994)
(court assumed the truthfulness of various assertions in abstracts that were
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