Appeal 2006-1679
Application 09/853,568
certain novel arrangements of printed lines or characters, useful and
intelligible only to the human mind.” Id. quoting In re Bernhart, 417 F.2d
1395, 1399, 163 USPQ 611, 615 (CCPA 1969). Accordingly, although we
will not disregard any claim limitations and will assess the claimed invention
as a whole, we will follow the Federal Circuit’s guidance as in the Gulack
decision and will “not give any patentable weight to printed matter absent a
new and unobvious functional relationship between the printed matter and
the substrate.” Id. (Emphasis supplied).
An electronic publication, including an on-line database or Internet
publication, is considered to be a “printed publication” within the meaning
of 35 U.S.C. § 102(a) and (b) provided the publication was accessible to
persons concerned with the art to which the document relates.
See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790,
795 (CCPA 1981)(“Accordingly, whether information is printed,
handwritten, or on microfilm or a magnetic disc or tape, etc., the one who
wishes to characterize the information, in whatever form it may be, as a
‘printed publication’ * * * should produce sufficient proof of its
dissemination or that it has otherwise been available and accessible to
persons concerned with the art to which the document relates and thus most
likely to avail themselves of its contents” (citations omitted)). See also
Amazon.com v. Barnesandnoble.com, 73 F.Supp. 2d 1228, 1233-34,
53 USPQ2d 1115, 1119 (W.D. Wash. 1999)(Pages from a website were
relied on by defendants as an anticipatory reference (to no avail), however
status of the reference as prior art was not challenged); In re Epstein, 32
F.3d 1559, 1556-57, 31 USPQ2d 1817, 1822 (Fed. Cir. 1994)(Database
printouts of abstracts which were not themselves prior art publications were
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013