In Re Marshall W. Cronyn

890 F.2d 1158, 13 U.S.P.Q. 2d (BNA) 1070, 1989 U.S. App. LEXIS 17805, 1989 WL 143427
CourtCourt of Appeals for the Federal Circuit
DecidedNovember 29, 1989
Docket89-1434
StatusPublished
Cited by56 cases

This text of 890 F.2d 1158 (In Re Marshall W. Cronyn) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In Re Marshall W. Cronyn, 890 F.2d 1158, 13 U.S.P.Q. 2d (BNA) 1070, 1989 U.S. App. LEXIS 17805, 1989 WL 143427 (Fed. Cir. 1989).

Opinions

FRIEDMAN, Senior Circuit Judge.

The sole question in this case is whether the Board of Patent Appeals and Interferences (Board) correctly held that three undergraduate theses were “printed publications” under 35 U.S.C. § 102(b) (1982), which anticipated the invention for which a patent was sought. We hold that the theses were not “printed publications,” and we therefore reverse the Board.

I

A. The facts in this case are undisputed. The patent application was for a chemical compound that apparently may be useful in cancer treatment. The appellant, the applicant for the patent, is a professor of chemistry (and Vice President/Provost) at Reed College, a liberal arts college in Portland, Oregon. Reed College is solely an undergraduate institution, and does not have any graduate programs for research or scholarship.

As a requirement for graduation with a Bachelor of Arts degree, Reed College requires each of its students to prepare a [1159]*1159senior thesis. The student presents the thesis to a Thesis Oral Board, composed of four faculty members including the student’s faculty sponsor and another faculty member from the student’s department. The appellant states that the “purpose of the thesis requirement is to give the student the opportunity to carry out laboratory or scholarly research and to present the work in a more thorough and formal manner than is normally possible with the usual term paper,” and that the “thesis requirement is purely educational and the students are not required by general college policy to produce original or publishable research or scholarship.”

A copy of each thesis is filed in the main college library and in the library of the particular department in which the student’s work was done. The theses are listed on individual cards which show the student’s name and the title of the thesis. The cards are filed alphabetically by the author’s name.

The titles of the theses may be descriptive, as were the titles of the three theses involved in this case. One of these is entitled “Synthesis of Cyclic Methanedisulfo-nate Esters by Silver Salt Method.” Other theses on file in the chemistry department library, however, have more fanciful titles, such as “Make My Func. the P-Func”; “Close to the Edge”; “Evolution and Lucifer”; “Easy Come, Easy Go”; “Hunan’s Thanatopsis: Haecceity, Tathat, and Doe-decahedrane”.

In the main library, there are approximately 6,000 cards listing theses. In the chemistry department library there are approximately 450 cards contained in a shoebox. At oral argument the appellant stated that both the listing cards and the theses themselves are available for public examination.

In neither the main library nor the chemistry department library are the theses generally indexed or cataloged. They are not assigned Library of Congress catalog numbers.

The appellant stated that "occasionally a student’s thesis is published, in whole or part, in a professional journal.” He further stated, however, that although the thesis research projects were carried out in his laboratory, “none of the students involved have presented their senior theses or pertinent parts thereof in any professional journal or to any professional society, or in any other professional setting.” The appellant also stated that prior to the filing of the patent application he had not “made any publication in a professional journal, or presentation to a professional society, or any other disclosure or presentation in the fields” involved in or related to the senior theses that “would associate my research interests with the field of the invention.”

B. The Board affirmed the examiner’s rejection of the application under 35 U.S.C. § 102(b) as anticipated by the three student theses. The Board stated that the “sole issue before us is whether” the three theses “are printed publications within the meaning of” 35 U.S.C. § 102(b), since the appellant had “conceded ... that if they are, the subject matter of the claims is unpatentable to him.” The Board found that there was “no significant distinction between the facts here and those in” In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed.Cir.1986), discussed in part II below. It concluded that “reasonable diligence” by a researcher in the field “would have uncovered the documents.”

II

Under 35 U.S.C. § 102(b), a patent cannot be granted if “the invention was ... described in a printed publication in this ... country ... more than one year prior to the date of the application for patent in the United States.... ”

In eases like the present one, where there are no disputed factual issues, the question whether particular material is a “printed publication” is a question of law. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 & n. 9, 1 USPQ2d 1593, 1597 & n. 9 (Fed.Cir.), cert. denied, 481 U.S. 1052, 107 S.Ct. 2187, 95 L.Ed.2d 843 (1987) (citing In re Hall, 781 F.2d 897, 899, 228 USPQ 453, 455 (Fed.Cir.1986)). See also National Semiconductor Corp. v. [1160]*1160Linear Technology Corp., 703 F.Supp. 845, 847, 8 USPQ2d 1359, 1361 (N.D.Cal.1988). “[T]he printed publication provision was designed to prevent withdrawal by an inventor, as the subject matter of a patent, of that which was already in the possession of the public.” In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981).

“The statutory phrase ‘printed publication’ has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was ‘published.’ ” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568, 7 USPQ2d 1057, 1062 (Fed.Cir.), cert. denied, — U.S. -, 109 S.Ct. 228, 102 L.Ed.2d 218 (1988).

This court and its predecessor twice recently have considered the status as printed publications of academic papers filed in a university library. In In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978), the Board held that a master’s thesis became a printed publication upon its receipt by a university library because the three-member faculty committee that had approved the thesis “could have located his thesis in the library where it was available to them on request,” so that the thesis “was capable of providing wide public access to the information it contained.” 568 F.2d at 1359, 196 USPQ at 673.

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890 F.2d 1158, 13 U.S.P.Q. 2d (BNA) 1070, 1989 U.S. App. LEXIS 17805, 1989 WL 143427, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-marshall-w-cronyn-cafc-1989.