Wednesday, July 26, 2006

Prior art issue to come in challenge to Thomson/WARF patents

Although not explicitly presented in the current re-exam request by PubPat/FTCR, there is likely to be a prior art issue somewhere down the line involving the work of Bongso.

The CAFC recently visited the scope of prior art in Bruckelmyer v. Ground Heaters, 2006 U.S. App. LEXIS 16174.

The CAFC dissent from denial of petition for rehearing begins:

The facts are not in dispute. The '085 and '301 patents were held
invalid because of the existence of two drawings that were stored in the
unpublished archive of an unrelated Canadian patent application by a different
inventor. The drawings were cancelled from the Canadian application before the patent
was granted, and are not referred to in the published Canadian patent. It
is undisputed that these cancelled drawings are not available in any
database or any library, and that no index, no catalog, no abstract suggests
their existence or their content. It is not contested that the only way to
obtain these drawings (although their existence was unknown) is to personally
go to the Canadian Patent Office in Hull, Quebec, and ask to examine the file
wrapper (the prosecution history) of this particular patent, which is entitled
"Portable Construction Heating System".

The CAFC noted: Foreign knowledge is not prior art unless it is patented or

The CAFC cited In re Tenney, 45 C.C.P.A. 894, 254 F.2d 619, 626-27 for the statement:
The law sets up a conclusive presumption to the effect that the public has knowledge of the publication when a single printed copy is proved to have been so published.

The CAFC also noted: In In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989), this court explained that "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.'"

The CAFC cited the more recent case: In re Klopfenstein, 380 F.3d 1345 (Fed. Cir.


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