Appeal No. 2005-2512
Reexamination Control No. 90/006,431
G. The merits of appellant’s argument that the RailMill documents are not
printed publications having publication dates prior to appellant’s filing date
The burden of proof on the question of whether the RailMill documents are
printed publications and were published prior to appellant’s April 17, 1995, filing date
rests on the examiner. Cf. In re Hall, 781 F.2d 897, 899, 228 USPQ 453, 455 (Fed. Cir.
1986):
The proponent of the publication bar must show that prior to the critical
date the reference was sufficiently accessible, at least to the public
interested in the art, so that such a one by examining the reference could
make the claimed invention without further research or experimentation.
See In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed. Cir.
1985); In re Bayer, 568 F.2d at 1361, 196 USPQ at 674; In re Wyer,
655 F.2d [221,] 226-27, 210 USPQ [790,] 794-95 [(CCPA 1981)].
The statutory phrase “printed publication” has been interpreted to mean that before the
critical date the reference must have 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 and recognize and comprehend therefrom
the essentials of the claimed invention without need of further research or
experimentation.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378, 78
USPQ2d 1684, 1687 (Fed. Cir. 2006) (quoting Wyer, 655 F.2d at 226, 210 USPQ at
795).
The examiner argues that “U.S. Patent 5,828,580 refers to Arcadia (col. 4, lines
9-17); said patent was filed on 11/8/19954; this indicates that RailMill was also available
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