Appeal No. 1997-1746
Application No. 08/469,801
author of the here applied Tonkovich doctoral thesis) was a
doctoral candidate. Thus, a person interested and ordinarily
skilled in the subject matter would not have been led by this
reference to search in a doctoral thesis indexing system for
additional scientific papers written by one of the authors
listed on the Ray et al. reference.
Moreover, even if for some reason a person were to search
for a doctoral thesis, it is unclear whether the Tonkovich
thesis of interest would have been discovered. This is
because there is merit in the appellants’ argument that such a
search would have been limited to the UMI Dissertation
Abstracts database which did not contain the Tonkovich thesis.
Finally, our opinion on this matter is reinforced by the fact
that the title of the Tonkovich thesis is not particularly
descriptive of the subject matter described therein and here
claimed. As a consequence, even if the title and author
information in the University of Minnesota on-line card
catalog were discovered by a person interested in the subject
matter under consideration, it is further unclear whether this
information would have led the person to actually obtain a
copy of the Tonkovich thesis in order to research the contents
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