Editing MPEP 2128

<noinclude>{{MPEP Section|2127|2100|2129}}</noinclude>

==[[MPEP 2128|2128 "Printed Publications" as Prior Art]]==

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A REFERENCE IS A "PRINTED PUBLICATION" 
IF IT IS ACCESSIBLE TO THE PUBLIC

A reference is proven to be a “printed publication” 
“upon a satisfactory showing that such document has 
been disseminated or otherwise made available to the 
extent that persons interested and ordinarily skilled in 
the subject matter or art, exercising reasonable diligence, 
can locate it.” In re Wyer, 655 F.2d 221, 
210 
USPQ 790 (CCPA 1981) (quoting I.C.E. Corp. v. 
Armco Steel Corp., 250 F. Supp. 738, 743, 148 USPQ 
537, 540 (SDNY 1966)) (“We agree that ‘printed publication’ 
should be approached as a unitary concept. 
The traditional dichotomy between ‘printed’ and 
‘publication’ is no longer valid. Given the state of 
technology in document duplication, data storage, and 
data retrieval systems, the ‘probability of dissemination’ 
of an item very often has little to do with 
whether or not it is ‘printed’ in the sense of that word 
when it was introduced into the patent statutes in 
1836. In any event, interpretation of the words 
‘printed’ and ‘publication’ to mean ‘probability of 
dissemination’ and ‘public accessibility’ respectively, 
now seems to render their use in the phrase ‘printed 
publication’ somewhat redundant.”) In re Wyer, 
655 F.2d at 226, 210 USPQ at 794.

See also Carella v. Starlight Archery, 804 F.2d 135, 
231 USPQ 644 (Fed. Cir. 1986) (Starlight Archery 
argued that Carella’s patent claims to an archery sight 
were anticipated under 35 U.S.C. 102(a) by an advertisement 
in a Wisconsin Bow Hunter Association 
(WBHA) magazine and a WBHA mailer prepared 
prior to Carella’s filing date. However, there was no 
evidence as to when the mailer was received by any of 
the addressees. Plus, the magazine had not been 
mailed until 10 days after Carella’s filing date. The 
court held that since there was no proof that either the 
advertisement or mailer was accessible to any member 
of the public before the filing date there could be 
no rejection under 35 U.S.C. 102(a).). 

ELECTRONIC PUBLICATIONS AS PRIOR ART

Status as a “Printed Publication”

 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, 
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, 31 USPQ2d 1817 (Fed. Cir. 
1994) (Database printouts of abstracts which were not 
themselves prior art publications were properly relied 
as providing evidence that the software products referenced 
therein were “first installed” or “released” 
more than one year prior to applicant’s filing date.).

The Office policy requiring recordation of the field 
of search and search results (see MPEP § 719.05) 
weighs in favor of finding that Internet and on-line 
database references cited by the examiner are “accessible 
to persons concerned with the art to which the 
document relates and thus most likely to avail themselves 
of its contents.” Wyer, 655 F.2d at 221, 
210 USPQ at 790. Office copies of an electronic document 
must be retained if the same document may 
not be available for retrieval in the future. This is 
especially important for sources such as the Internet 
and online databases.

Date of Availability 

 Prior art disclosures on the Internet or on an on-
line database are considered to be publicly available 
as of the date the item was publicly posted. Absent 
evidence of the date that the disclosure was publicly 
posted, if the publication itself does not include a 
publication date (or retrieval date), it cannot be relied 
upon as prior art under 35 U.S.C. 102(a) or (b). 
However, it may be relied upon to provide evidence 
regarding the state of the art. Examiners may ask the 
Scientific and Technical Information Center to find 
the earliest date of publication or posting. See 
MPEP § 901.06(a), paragraph IV. G. 

Extent of Teachings Relied Upon 

An electronic publication, like any publication, 
may be relied upon for all that it would have reasonably 
suggested to one having ordinary skill in the art. 
See MPEP § 2121.01 and § 2123. Note, however, that 
if an electronic document which is the abstract of a 
patent or printed publication is relied upon in a rejection 
under 35 U.S.C. 102 or 103, only the text of the 
abstract (and not the underlying document) may be 
relied upon to support the rejection. In situations 
where the electronic version and the published paper 
version of the same or a corresponding patent or 
printed publication differ appreciably, each may need 
to be cited and relied upon as independent references 
based on what they disclose. 

Internet Usage Policy

 See MPEP § 904.02(c) for the portions of the Internet 
Usage Policy pertaining to Internet searching and 
documenting search strategies. See MPEP §
 
707.05for the proper citation of electronic documents. 

EXAMINER NEED NOT PROVE ANYONE ACTUALLY 
LOOKED AT THE DOCUMENT

One need not prove someone actually looked at a 
publication when that publication is accessible to the 
public through a library or patent office. See In re 
Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981); In 
re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 
1986).

===2128.01 Level of Public Accessibility Required===

I.A THESIS PLACED IN A UNIVERSITY 
LIBRARY MAY BE PRIOR ART IF 
SUFFICIENTLY ACCESSIBLE TO THE 
PUBLIC

A doctoral thesis indexed and shelved in a library is 
sufficiently accessible to the public to constitute prior 
art as a “printed publication.” In re Hall, 781 F.2d 
897, 228 USPQ 453 (Fed. Cir. 1986). Even if access 
to the library is restricted, a reference will constitute a 
“printed publication” as long as a presumption is 
raised that the portion of the public concerned with 
the art would know of the invention. In re Bayer, 
568 F.2d 1357, 196 USPQ 670 (CCPA 1978).

In In re Hall, general library cataloging and shelving 
practices showed that a doctoral thesis deposited 
in university library would have been indexed, cataloged 
and shelved and thus available to the public 
before the critical date. Compare In re Cronyn,
890 F.2d 1158, 13 USPQ2d 1070 (Fed. Cir. 1989) 
wherein doctoral theses were shelved and indexed by 
index cards filed alphabetically by student name and 
kept in a shoe box in the chemistry library. The index 
cards only listed the student name and title of the thesis. 
Two of three judges held that the students’ theses 
were not accessible to the public. The court reasoned 
that the theses had not been either cataloged or 
indexed in a meaningful way since thesis could only 
be found if the researcher’s name was known, but the 
name bears no relationship to the subject of the thesis. 
One judge, however, held that the fact that the theses 
were shelved in the library was enough to make them 
sufficiently accessible to the public. The nature of the 
index was not determinative. This 
judge relied on 
prior Board decisions (Gulliksen v. Halberg, 75 USPQ 
252, 257 (Bd. App. 1937) and Ex parte Hershberger, 
96 USPQ 54, 56 (Bd. App. 1952)), which held that 
shelving a single copy in a public library makes the 
work a “printed publication.” It should be noted that 
these Board decisions have not been expressly overruled 
but have been criticized in other decisions. 
See In re Tenney, 254 F.2d 619, 117 USPQ 348 
(CCPA 1958) (concurring opinion by J.Rich) (A document, 
of which there is but one copy, whether it be 
handwritten, typewritten or on microfilm, may be 
technically accessible to anyone who can find it. Such 
a document is not “printed” in the sense that a printing 
press has been used to reproduce the document. If 
only technical accessibility were required “logic 
would require the inclusion within the term [printed] 
of all unprinted public documents for they are all 
‘accessible.’ While some tribunals have gone quite far 
in that direction, as in the ‘college thesis cases’ I feel 
they have done so unjustifiably and on the wrong theory. 
Knowledge is not in the possession of the public 
where there has been no dissemination, as distinguished 
from technical accessibility...” The real significance 
of the word “printed” is grounded in the 
“probability of wide circulation.”). See also Deep 
Welding, Inc. v. Sciaky Bros., 417 F.2d 1227, 
163 USPQ 144 (7th Cir. 1969) (calling the holding of 
Ex parte Hershberger “extreme”). Compare In re 
Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) 
(A reference will constitute a “printed publication” as 
long as a presumption is raised that the portion of the 
public concerned with the art would know of the 
invention even if accessibility is restricted to only 
this part of the public. But accessibility to applicant’s 
thesis was restricted to only three members of a graduate 
committee. There can be no presumption that 
those concerned with the art would have known of the 
invention in this case.).

II.ORALLY PRESENTED PAPER CAN CONSTITUTE 
A “PRINTED PUBLICATION” 
IF WRITTEN COPIES ARE AVAILABLE 
WITHOUT RESTRICTION

A paper which is orally presented in a forum open 
to all interested persons constitutes a “printed publication” 
if written copies are disseminated without 
restriction. Massachusetts Institute of Technology v. 
AB Fortia, 774 F.2d 1104, 1109, 227 USPQ 428, 432 
(Fed. Cir. 1985) (Paper orally presented to between 50 
and 500 persons at a scientific meeting open to all 
persons interested in the subject matter, with written 
copies distributed without restriction to all who 
requested, is a printed publication. Six persons 
requested and obtained copies.).

III.INTERNAL DOCUMENTS INTENDED TO 
BE CONFIDENTIAL ARE NOT “PRINTED 
PUBLICATIONS”

Documents and items only distributed internally 
within an organization which are intended to remain 
confidential are not “printed publications” no matter 
how many copies are distributed. There must be an 
existing policy of confidentiality or agreement to 
remain confidential within the organization. Mere 
intent to remain confidential is insufficient. In re 
George, 2 
USPQ2d 1880 (Bd. Pat. App. & Inter. 
1987) (Research reports disseminated in-house to 
only those persons who understood the policy of confidentiality 
regarding such reports are not printed publications 
even though the policy was not specifically 
stated in writing.); Garret Corp. v. United States, 422 
F.2d 874, 878, 164 USPQ 521, 524 (Ct. Cl.1970) 
(“While distribution to government agencies and personnel 
alone may not constitute publication ... distribution 
to commercial companies without restriction 
on use clearly does.”); Northern Telecom Inc. v. 
Datapoint Corp., 908 F.2d 931, 15 USPQ2d 1321 
(Fed. Cir. 1990) (Four reports on the AESOP-B military 
computer system which were not under security 
classification were distributed to about fifty organizations 
involved in the AESOP-B project. One document 
contained the legend “Reproduction or further 
dissemination is not authorized.” The other documents 
were of the class that would contain this legend. 
The documents were housed in Mitre 
Corporation’s library. Access to this library was 
restricted to those involved in the AESOP-B project. 
The court held that public access was insufficient to 
make the documents “printed publications.”).

IV.PUBLICLY DISPLAYED DOCUMENTS 
CAN CONSTITUTE A “PRINTED PUB-
LICATION” EVEN IF THE DURATION 
OF DISPLAY IS FOR ONLY A FEW DAYS 
AND THE DOCUMENTS ARE NOT DIS-
SEMINATED BY COPIES OR INDEXED 
IN A LIBRARY OR DATABASE

A publicly displayed document where persons of 
ordinary skill in the art could see it and are not precluded 
from copying it can constitute a “printed publication,” 
even if it is not disseminated by the 
distribution of reproductions or copies and/or indexed 
in a library or database. As stated in In re Klopfenstein, 
380 F.3d 1345, 1348, 72 USPQ2d 1117, 1119 
(Fed. Cir. 2004), “the key inquiry is whether or not a 
reference has been made ‘publicly accessible.’” Prior 
to the critical date, a fourteen-slide presentation disclosing 
the invention was printed and pasted onto 
poster boards. The printed slide presentation was displayed 
with no confidentiality restrictions for approximately 
three cumulative days at two different 
industry events. 380 F.3d at 1347, 72 USPQ2d at 
1118. The court noted that “an entirely oral presentation 
that includes neither slides nor copies of the presentation 
is without question not a ‘printed 
publication’ for the purposes of 35 U.S.C. § 102(b). 
Furthermore, a presentation that includes a transient 
display of slides is likewise not necessarily a ‘printed 
publication.’” 380 F.3d at 1349 n.4, 72 USPQ2d at 
1122 n.4. In resolving whether or not a temporarily 
displayed reference that was neither distributed nor 
indexed was nonetheless made sufficiently publicly 
accessible to count as a “printed publication” under 
35 U.S.C. 102(b), the court considered the following 
factors: “the length of time the display was exhibited, 
the expertise of the target audience, the existence (or 
lack thereof) of reasonable expectations that the material 
displayed would not be copied, and the simplicity 
or ease with which the material displayed could have 
been copied.” 380 F.3d at 1350, 72 USPQ2d at 1120. 
Upon reviewing the above factors, the court concluded 
that the display “was sufficiently publicly 
accessible to count as a ‘printed publication.’” 
380 
F.3d at 1352, 72 USPQ2d at 1121.

===2128.02 Date Publication Is Available as a Reference===

DATE OF ACCESSIBILITY CAN BE SHOWN 
THROUGH EVIDENCE OF ROUTINE BUSINESS 
PRACTICES

Evidence showing routine business practices can be 
used to establish the date on which a publication 
became accessible to the public. Specific evidence 
showing when the specific document actually became 
available is not always necessary. Constant v. 
Advanced Micro-Devices, Inc., 848 F.2d 1560, 
7 
USPQ2d 1057 (Fed. Cir.), cert. denied, 988 U.S. 
892 (1988) (Court held that evidence submitted by 
Intel regarding undated specification sheets showing 
how the company usually treated such 
specification 
sheets was enough to show that the 
sheets were accessible by the public before the critical 
date.); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. 
Cir. 1986) (Librarian’s affidavit establishing normal 
time frame and practice for indexing, cataloging and 
shelving doctoral theses established that the thesis in 
question would have been accessible by the public 
before the critical date.). 

A JOURNAL ARTICLE OR OTHER PUBLICATION 
BECOMES AVAILABLE AS PRIOR ART 
ON DATE OF IT IS RECEIVED BY A MEMBER 
OF THE PUBLIC

A publication disseminated by mail is not prior art 
until it is received by at least one member of the public. 
Thus, a magazine or technical journal is effective 
as of its date of publication (date when first person 
receives it) not the date it was mailed or sent to the 
publisher. In re Schlittler, 234 F.2d 882, 110 USPQ 
304 (CCPA 1956).