Appeal 2006-2328
Application 10/131,049
art" has been carefully evaluated by applicant and determined not to be prior
art or evidence of the level of knowledge of those of ordinary skill in the art.
But, where terms such as "background art," or "related art," or "conventional"
are used, which raise the question of whether subject matter is, in fact, "prior
art," the USPTO should be permitted to presume that it is "prior art" absent an
express denial by the applicant. If not, applicants may dodge the essence of
Rule 56 by providing information as "background art" to ostensibly comply
with Rule 56 and yet the examiner would remain unable to apply the
information as prior art.
The '443 patent does not expressly admit that that the figures now
labeled "Background Art" are "Prior Art." The patent refers to Figure 1 as
illustrating the construction of an exemplary monitor and Figures 2A-2C as
waveform diagrams from the computer system in Figure 1 (col. 2,
lines 33-36). Figure 3 is stated to show "the construction of a monitor in
accordance with the present invention" (col. 3, line 66 to col. 4, line 1), which
suggests that the invention of Figure 3 is an improvement on the subject
matter of Figure 1, i.e., that the inventor knew of the subject matter of
Figure 1 when making his invention, and that it is prior art to the inventor or,
at least, evidence of the level of ordinary skill in the art. Counsel's answer at
the oral argument demonstrated an imprecise understanding of what is meant
by "prior art." Moreover, Appellant's response that "whether Figs, 1-2C
constitute 'Prior Art' hinges only on an inquiry of whether or not the subject
matter of Figs. 1-2C was published in this or a foreign country, or was known
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