Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE HARVEY F. GEORGE AND ROBERT H. OPPENHEIMER
Appeal No. 86-0278
January 29, 1987
HEARD: October 16, 1986
Application for Patent filed September 2, 1980, Serial No. 183,401, a Continuation of Serial No. 745,205 filed November 26, 1976, now abandoned, which is a Continuation of Serial No. 247,217 filed April 24, 1972, now abandoned, which is a Continuation of Serial No. 75,731 filed September 25, 1970, now abandoned, which is a Continuation of Serial No. 812,503 filed December 31, 1968, now abandoned, which is a Continuation of Serial No. 493,808 filed October 7, 1965, now abandoned. Method and Apparatus for Transferring Ink in Gravure Printing.
Garold E. Bramblett, Jr. et al. for appellants
Messenheimer and Cohen
This is an appeal from the final rejection of claims 19 through 21, 23, 24, and 26 through 34, all the claims remaining in the application.
An earlier decision of the board in this application, styled as Ex parte George, 230 USPQ 575 (BPAI 1984), provides the background for the present appeal. In particular, a majority of the board determined that a Zimmerman et al. document was a printed publication within the meaning of 35 USC 102(b) and, therefore, prior art to appellants. The dissent disagreed. Under the provisions of 37 CFR 1.196(b) the majority introduced respective rejections of appellants' claims under 35 USC 102(b) and 35 USC 103 relying upon the Zimmerman et al. document. In subsequent proceedings before the examiner, appellants submitted additional evidence in support of their view that the Zimmerman et al. document is not a printed publication. The examiner, unpersuaded by the additional evidence, made the rejections of appellants' claims final. This appeal questions the examiner's position. In the interest of brevity, we presume in this opinion a complete understanding of the earlier record that is readily derived from a reading of the board decision cited, supra.
In the brief, appellants indicate that the sole issue to be decided in this appeal is whether the Zimmerman et al. document describing appellants' research was sufficiently available to the public to be a prior publication under 35 USC 102(b). In appellants' view, if it is, the claims stand properly rejected. If it is not, the claims are allowable. Appellants rely upon particular evidence of record in support of their position. The brief specifies an affidavit of Harvey F. George dated June 4, 1980, and a subsequent affidavit of Harvey F. George dated July 9, 1984, each of which was before the earlier board. New evidence proffered by appellants includes a 'Second Affidavit of Harvey F. George' dated March 12, 1985 with an attached 'Agreement between Gravure Research Institute and European Rotogravure Association' labelled as Exhibit 28, an 'Affidavit of Valfrid Palmer' dated February 14, 1985, and an 'Affidavit of Gordon R. Gillies' dated March 7, 1985. Appellants argue that the Zimmerman et al. document is an internal research report of the Gravure Research Institute (GRI). Additionally, it is asserted by appellants that there is absolutely no evidence that the report was in the hands of anyone other than members of GRI prior to the critical date. Further, appellants disagree with the majority view of the earlier board that the Zimmerman research report was distributed without confidential restriction. Appellants submit that the respective affidavits of Palmer and Gillies corroborate the earlier sworn testimony of Mr. George on the GRI policy concerning confidentiality and adherence to this policy by GRI members. Appellants also make reference to the agreement between GRI and the European Rotogravure Association with respect to the obligations of secrecy set forth therein. It is additionally pointed out by appellants that if GRI's research results could be freely disseminated, the rights to the inventions derived therefrom for which members pay a substantial annual fee, as set forth in the by-laws, would have no value. Thus, it is appellants' position that without a well understood policy of confidentiality, there would be little reason for members to belong and the corporation's primary reason for existence would vanish. Thus, appellants argue, the only logical inference to be drawn is that GRI did have a policy of confidentiality relative to its research reports, just as stated in the affidavits. The full text of appellants' argument appears in the brief on pages 11 through 18 thereof.
*2 The examiner focuses upon appellants' submissions but finds therein a lack of corroborating evidence as to whether the membership as a whole understood the nature of any policy of confidentiality. The examiner further indicates that there is no convincing evidence that the board of directors of GRI disseminated any policy of confidentiality to the members as a whole. In the examiner's view, it would appear that a written policy of confidentiality for research reports would exist if a firm policy existed. The examiner also emphasizes that a discussion between board members concerning the confidentiality of research reports, as described in the Palmer and Gillies affidavits, without the dissemination of a constructive policy of such confidentiality to the membership as a whole does not appear to be an express policy, but merely a discussion. The full statement of the examiner's position is set forth in the answer on pages 3 through 7 thereof.
In reaching our conclusion which follows, this board has carefully weighed all the evidence before it relative to the particular publication issue in this appeal and has given careful consideration to the respective viewpoints advocated by appellants and the examiner.
Initially, we note that the publication bar under 35 USC 102(b) is a legal determination based on underlying fact issues and is, therefore, approached on a case by case basis. See In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). We have before us evidence not available to the board at the time of its earlier decision in this application.
It is the determination of this board that appellants' additional showing provides persuasive evidence that corroborates the earlier views expressed by affiant George that the Zimmerman et al. document was an internal research report of GRI.
We find from our assessment of the respective affidavits of Gordon R. Gillies and Valfrid Palmer that each of the affiants has had a long association with GRI as a member representative and as a director of GRI. Thus, their expressed views of an organizational understanding among the members of GRI of a policy of confidentiality regarding research reports clearly buttresses affiant George's earlier statements on this point. They have also, under oath, indicated that to the best of their knowledge all other members clearly understood the policy of confidentiality regarding research reports. Thus, while we appreciate the examiner's concern that a written policy of confidentiality by the board of directors of GRI disseminated to each member is not before us, we recognize that the evidence of record substantiates the earlier expressed views of affiant George that the members of GRI clearly understood that a policy of confidentiality existed relative to research reports. As pointed out by appellants, the dues paying members of GRI would not be able to benefit from inventions that result from on-going research if the research reports were not confidential and, therefore, readily available to all interested parties in the gravure printing field. It is also apparent to us that the 'Agreement between Gravure Research Institute and European Rotogravure Association' further reflects the organizational policy of confidentiality. More specifically, the referenced agreement discusses scientific reports and the requirement of absolute secrecy with respect to the reports. It is of particular significance that the named agreement was signed by the then president of GRI, who according to the by-laws (Section 6.1) is an ex-officio member of the board of directors of GRI. The by-laws of GRI (Section 4.2) specify that the board of directors controls and manages the policy of the corporation. Thus, in our view, the agreement referenced above further evidences a carrying out of a policy of confidentiality regarding research reports by the president of GRI. The record also instructs us that the distribution of research reports was confined to GRI members, and that there is no evidence of actual dissemination beyond the membership prior to the critical date. Further, the record indicates that a request from other than members of GRI for a copy of a research report would not be honored. Accordingly, we perceive these practices of GRI as evidence of a restricted dissemination of research reports.
*3 In light of our conclusion that GRI practiced a policy of confidentiality with respect to its research reports, we determine that the Zimmerman et al. research report applied by the examiner in the respective rejections of appellants' claims is not a printed publication as specified in 35 USC 102(b). Accordingly, the examiner's respective rejections cannot be sustained.
The decision of the examiner is reversed.
BOARD OF PATENT APPEALS AND INTERFERENCES
Saul I. Serota
A. Donald Messenheimer
Irwin Charles Cohen