Titanium baseball

From Patentbarquestions

[from MyPatentBar.com]

Q) Titanium Baseball (MPEP 2100, Public Use or Printed Publication)

Recent test takers report a Titanium/Museum Baseball Question in the Prometric database. Actually, there are two variants

of this question which, in my opinion, supports that this question is or was a beta test. The first variant displays a

baseball in a museum (public use), while the second (and more recent) variant displays a brochure about a baseball (printed

publication).

Variant 1 – Baseball Displayed (public use)

Test takers report a question involving a baseball and accompanying article about a special titanium baseball put on public

display in a museum. Is it public use if only “wealthy museum patrons who have no interest or skill to make baseballs” see it?

Or is it public use when the general public sees it, or people who have the interest/skill to make baseballs can see it?

In other words, is something public use if ONLY the people having skill in the art can see it?

June 20: Article printed, not distributed at all

June 25: put in library open only to wealthy museum patrons, none of whom have skill in the art

June 30: Museum library opens to public

July 1: TV advertisement of grand opening of museum library

July 4: Grand opening

Variant 2 – Baseball Not Displayed (printed publication/prior art)

This question explicitly states that a brochure about a baseball is given to the museum (which gives you a tricky red herring

date for cataloguing and indexing the brochure).

Article is published on Date 1 though not distributed. Article is put on display at museum on Date 2, museum is only accessed

at this time by wealthy museum patrons who don’t have the skills to make baseballs (but the museum is a baseball museum).

On Date 3, museum has a big PR event with news media etc. On Date 4 (July 4th), articles in museum are indexed and sorted.

Which date is the prior art date of the publication?

ANSWER

So far no one has reported a certain fact pattern, and there appears to be at least two variants; so to answer this question,

distinguish if it is a public use or printed publication. Prior art date and public use date are two entirely separate issues.

If the question asks for prior art date (Variant 2), then the answer is the date it is indexed and cataloged so someone

can actually find it. If the question asks for the date of first public use (Variant 1), then the answer is the date

the thing was displayed for museum patrons to see it, regardless whether the museum is semi-private.

DISCUSSION

Variant 1 (public use argument) -

Just go to the MPEP and read the section with Blaisdell and Kuklo (display in a laboratory constituted public use; doesn’t have

to be displayed to those skilled in the art; and no need for all inner workings to be shown), and you’ll see what they’re testing.

[MPEP 2133.03(a) II A. 2] There were different times when the reference could have gone into effect;

in this case the baseball was displayed to the museum members over a year before the filing date of the application.

Thus, it’s a 102(b) bar, due to the “public use” beginning when it was displayed to members of the museum.

Compare to Moleculon (the rubix cube case) where the inventor did not cause a public use by leaving the cube on his desk.

Variant 2 (printed publication argument/prior art) –

This is not a public use under 102(b) because it is not a use of the invention at all. 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, I just took the exam and my analysis turned the question upon the date of Date 4, which is when the library was indexed, cataloged, and shelved. Based on the section in the MPEP, that’s what makes the date critical.

MPEP 2128.01, IV. 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.” (Note that “printed publication” as used above applies to 102(a) as well.)

AND THE USPTO SAYS

There’s a good argument for it being prior art as soon as it’s available to ANY member of the public (even if just wealthy museum patrons) as per the Thesis-on-Library-Shelf case mentioned in 2100. However, another line of court cases mentioned in the same passage distinguishes from this argument, though it doesn’t overrule it, saying that the more appropriate inquiry is when one with skill in the art would reasonably be capable of accessing the publication. The question explicitly says that the wealthy museum patrons are people who do NOT have skill in the art.

Someone who went to the MPEP to check his wrong answers learned that the July 4 date (which I think corresponded to a shelving in a library) was the appropriate prior art date; the dates may have changed, as it seems odd to me that the prior art date would not at the very least be TV advertisement (though I’m inclined to think the answer is when the library opened to the public).