Spalding v. Hartsell

Informative decision only: persuasive authority, not binding precedent. In an interference, a movant asserting that a document is a "printed publication" under 35 U.S.C. § 102 must itself allege specific facts, tied to particular evidence, showing the document was sufficiently accessible to the part of the public concerned with the art, and it cannot meet that burden by citing whole exhibits or incorporating by reference arguments from affidavits, which the Standing Order prohibits. A motion that does neither fails to make out a prima facie case and is denied without reaching the merits of the reference or the opposition. The decision follows and reiterates LeVeen v. Edwards, 57 USPQ2d 1406 (Bd. Pat. App. & Int. 2000), on incorporation by reference and on the movant's duty to set out facts, and applies the Federal Circuit and CCPA accessibility standard for printed publications to a motion's statement of facts. The party attacking an opponent's claims on a paper of uncertain public availability must plead the dissemination facts specifically, such as the nature of the meetings, who was invited, notice given, distribution mechanisms, and the audience's interest. It cannot rely on the board to sift affidavits or on the opponent to admit or deny facts it did not state. The opposing party can defeat the motion without reaching the substance of the reference, because the burden never shifts, and need not allege or prove the opposite of what the movant must show. The Board relied on In re Bayer, 568 F.2d 1357 (CCPA 1978), In re Hall, 781 F.2d 897 (Fed. Cir. 1986), In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989), and In re Wyer, 655 F.2d 221 (CCPA 1981), for the accessibility standard, and on Kubota v. Shibuya, 999 F.2d 517 (Fed. Cir. 1993), for the movant's burden. LEGAL TEST OR STANDARD: A printed publication must at least have been sufficiently accessible to that part of the public which is concerned with the art of the reference to raise a presumption that that audience would know of its content (In re Bayer). The proponent must show that prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art, so that one by examining it could make the invention without further research or experimentation (In re Hall). No particular factor is always conclusive or required, and each case is decided on its own facts. A motion must (1) lay out all relevant facts, with reference to the evidence which supports the facts, and (2) present an argument why the facts justify the relief requested. The movant bears the burden of proof under 37 CFR 1.637(a). TRIGGERING FACTS: Junior party Spalding moved for judgment that senior party's claims 22, 28 and 29 were unpatentable under 35 U.S.C. 102(b) and/or 103(a) over the Bergamini Paper. The motion asserted the paper was distributed widely and publicly, cited four whole exhibits (three affidavits plus another) for that conclusion, and alleged no date after which the paper was a printed publication. The motion's facts did not address who sponsored or attended the two meetings, advance notice, distribution or cataloguing policy, or the audience's interest. Seventeen people had received or had access to the paper, which the Board found insufficient alone. The motion also did not explain why the art did not apply to Spalding's own claims. KEY QUOTE: "Incorporation of arguments by reference is prohibited." (Paper 92, p. 6) PRIOR PRECEDENT AFFECTED: Follows and reiterates LeVeen v. Edwards, 57 USPQ2d 1406 (Bd. Pat. App. & Int. 2000), described as a precedential decision of the Interference Trial Section, reproducing its Part C1(a) and C1(b)(1). It also applies Behr v. Talbott, 27 USPQ2d 1401 (Bd. Pat. App. & Int. 1992), on the movant's burden. No prior decision is overruled. PRACTICE TIP: In an interference motion on a printed-publication theory, put the dissemination and accessibility facts in the motion's own statement of facts, with pinpoint citations to specific paragraphs of the evidence. State the date from which the document is alleged to be public, and do not rely on citing whole affidavits or on incorporating arguments from them. Also explain why the asserted art does not apply to your own claims corresponding to the count, or it is presumed to apply under 37 CFR 1.637(a).