`
`2009-1060
`(Serial No. 08/692,201)
`
`
`
`
`
`IN RE RICHARD S. LISTER
`
`
`
`
`Peter M. Midgley, Jr., Zarian Midgley & Johnson PLLC, of Boise, Idaho, argued
`
`for appellant. Of counsel was Rexford A. Johnson.
`
`
`
`Joseph G. Piccolo, Associate Solicitor, Office of the Solicitor, United States
`Patent and Trademark Office, of Arlington, Virginia, argued for the Director of the United
`States Patent and Trademark Office. With him on the brief were Raymond T. Chen,
`Solicitor, and Benjamin D.M. Wood, Associate Solicitor.
`
`Appealed from: United States Patent and Trademark Office
`
`
` Board of Patent Appeals and Interferences
`
`
`
`
`
`
`United States Court of Appeals for the Federal Circuit
`
`2009-1060
`(Serial No. 08/692,201)
`
`
`
`IN RE RICHARD S. LISTER
`
`
`
`Appeal from the United States Patent and Trademark Office, Board of Patent Appeals
`and Interferences.
`
`
`
`
`
`
`
`__________________________
`
`
`
`
`
`
`
`DECIDED: September 22, 2009
`__________________________
`
`
`
`
`
`
`
`Before GAJARSA, LINN and PROST, Circuit Judges.
`
`PROST, Circuit Judge.
`
`Dr. Richard Lister appeals from a decision of the Board of Patent Appeals and
`
`Interferences (“Board”) that affirmed the examiner’s rejection of claims 21-25 of his
`
`application under 35 U.S.C. § 102(b). Because the record does not contain sufficient
`
`evidence that the prior art reference relied upon by the Board was publicly accessible
`
`more than one year prior to the date on which Dr. Lister filed his patent application, we
`
`vacate and remand.
`
`I. BACKGROUND
`
`
`
`Dr. Lister is a Ph.D. clinical psychologist and an avid sportsman. In his earlier
`
`days, he competed regularly in organized golf tournaments. However, he eventually
`
`grew tired of what he describes as the horrendously slow pace of a game of golf.
`
`
`
`Although he discontinued his participation in tournaments, he continued to play casually.
`
`During this time, he realized that casual golfers have great difficulty with the ordinary
`
`requirement that, beginning with the second stroke on each hole, the ball must be hit
`
`while lying directly on the ground. This observation led him to conclude that
`
`recreational golfers would be able to obtain better scores in a shorter time if they were
`
`permitted to tee up their balls on every shot except for those taken from designated
`
`hazard areas or the putting green.
`
`
`
`Dr. Lister described this method of playing golf in a manuscript entitled
`
`“Advanced Handicap Alternatives for Golf” (“the manuscript” or “the Lister manuscript”):
`
`It is strongly advocated that official sanction be given to the concept
`of a T handicap. That is, the unrestricted use of a golf tee or peg on any
`golf shot. Currently, it is allowed 18 times, but only when it is the first shot
`of the hole being played.
`The game otherwise would be played the same, including play in
`hazards of sand and water, where a tee would not be advocated or
`permitted. On the surface, this may appear to be a small and insignificant
`change. Ten years of careful research, by this Ph.D. clinical psychologist,
`sports psychologist, and former professional athlete, has found that a T
`handicap option would make a profound, positive influence on the game of
`golf.
`
`
`Subsequently, Dr. Lister decided to seek intellectual property protection for his method
`
`of playing golf. Proceeding without the assistance of a lawyer, he submitted the
`
`manuscript to the United States Copyright Office (“Copyright Office”) on July 4, 1994.
`
`The Copyright Office issued a certificate of registration on July 18, 1994. At some point
`
`in the future, Dr. Lister learned that he needed to obtain a patent rather than a copyright
`
`in order to protect his invention. On August 5, 1996, he filed an application with the
`
`United States Patent and Trademark Office (“USPTO”).
`
`2009-1060
`
`2
`
`
`
`
`
`The prosecution history of Dr. Lister’s application is lengthy. Over the past
`
`thirteen years, Dr. Lister has gone through several rounds of rejections and
`
`amendments with the examiner and two appeals to the Board. Of the five claims that
`
`remain at issue, claim 21, the only independent claim, is representative:
`
`21. A method for playing a game of organized golf wherein the
`improvement is that each participating player or group of players is
`permitted under the official or sanctioned rules of said game for normal
`play to raise or tee the ball up above turf level at any time during play,
`except for designated hazard areas and greens, and further comprising
`the step of recording the number of strokes taken by each participating
`player of [sic] group of players throughout said game for the purpose of
`comparing said number of strokes with the number of strokes of each
`other participating player or group of players or to an average or expected
`number of strokes for golf play in accordance with said game.
`
`In the most recent final rejection, issued on January 31, 2003, the examiner
`
`
`
`rejected claims 21-25 as anticipated by the Lister manuscript under 35 U.S.C. §§ 102(a)
`
`and 102(b). In the examiner’s view, the manuscript was sufficiently publicly accessible
`
`to be a printed publication within the meaning of § 102(b) because an interested
`
`researcher would have been able to find it by searching the Copyright Office’s catalog
`
`by title.
`
`
`
`On appeal, the Board reversed the § 102(a) rejection and affirmed the § 102(b)
`
`rejection. Ex parte Lister, No. 2006-0808 (B.P.A.I. Mar. 27, 2008). With respect to
`
`§ 102(a), the Board pointed out that that subsection bars the patentability of inventions
`
`that have been described in a printed publication prior to the applicant’s date of
`
`invention. Because “[Dr.] Lister could not have disclosed his own invention before he
`
`invented it,” the Board concluded that the § 102(a) rejection was erroneous. Turning to
`
`§ 102(b), which precludes the patenting of inventions that were described in a printed
`
`publication more than one year prior to the applicant’s date of filing, the Board noted
`
`2009-1060
`
`3
`
`
`
`that under In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), the Lister manuscript
`
`must have been “publicly accessible” in order to have been a printed publication. The
`
`Board found that the copyright registration for the Lister manuscript was issued on July
`
`18, 1994, more than one year prior to Dr. Lister’s application date of August 5, 1996. It
`
`further concluded that an interested researcher would have been able to find the
`
`manuscript by searching the Copyright Office’s catalog by title for the word “golf” in
`
`combination with the word “handicap.” Additionally, the Board found that an individual
`
`seeking to view the manuscript would have been able to do so by visiting the Copyright
`
`Office. Finally, the Board rejected Dr. Lister’s arguments that the inconvenience of
`
`visiting the Copyright Office and the Copyright Office’s rules prohibiting individuals from
`
`making copies of the manuscript precluded a finding of public accessibility. With
`
`respect to the unavailability of copies, the Board found that the inventive concept was
`
`straightforward enough that it could be understood and retained by a person of ordinary
`
`skill in the art upon reading the manuscript without any need to obtain a copy.
`
`
`
`In his request for rehearing before the Board, Dr. Lister argued that the
`
`manuscript was not publicly accessible because there was no evidence that it was
`
`actually accessed by anyone. Additionally, Dr. Lister argued that the Board erred by
`
`relying heavily on Klopfenstein, a case about whether a poster presentation at a
`
`conference was a printed publication, rather than citing more factually analogous cases,
`
`such as In re Hall, 781 F.2d 897 (Fed. Cir. 1986), and In re Cronyn, 890 F.2d 1158
`
`(Fed. Cir. 1989), which involved single copies of documents housed in libraries. The
`
`Board rejected both arguments, concluding that evidence of actual access was not a
`
`requirement under SRI International, Inc. v. Internet Security Systems, Inc., 511 F.3d
`
`2009-1060
`
`4
`
`
`
`1186, 1197 (Fed. Cir. 2008), and that the discussion of Hall and Cronyn in Klopfenstein,
`
`380 F.3d at 1349, demonstrates that the law set forth in Klopfenstein is relevant to
`
`library cases. Ex parte Lister, No. 2006-0808, slip op. at 3-5 (B.P.A.I. July 22, 2008).
`
`
`
`Dr. Lister timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)
`
`and 35 U.S.C. § 141.
`
`II. DISCUSSION
`
`A
`
`
`
`“Whether an asserted anticipatory document qualifies as a ‘printed publication’
`
`under § 102 is a legal conclusion based on underlying factual determinations.” Cooper
`
`Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed. Cir. 2002).
`
`We review the Board’s factual determinations for substantial evidence, In re Gartside,
`
`203 F.3d 1305, 1315 (Fed. Cir. 2000), and its legal conclusions de novo, Klopfenstein,
`
`380 F.3d at 1347.
`
`
`
`Section 102(b) is a bar to patentability if “the invention was patented or described
`
`in a printed publication in this or a foreign country or in public use or on sale in this
`
`country, more than one year prior to the date of the application for patent in the United
`
`States.” 35 U.S.C. § 102(b). “The bar is grounded on the principle that once an
`
`invention is in the public domain, it is no longer patentable by anyone.” Hall, 781 F.2d
`
`at 898.
`
`In order to qualify as a printed publication within the meaning of § 102, a
`
`reference “must have been sufficiently accessible to the public interested in the art.”
`
`Cronyn, 890 F.2d at 1160 (quoting Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560,
`
`1568 (Fed. Cir. 1988)). “Because there are many ways in which a reference may be
`
`2009-1060
`
`5
`
`
`
`disseminated to the interested public, ‘public accessibility’ has been called the
`
`touchstone in determining whether a reference constitutes a ‘printed publication’ bar
`
`under 35 U.S.C. § 102(b).” Hall, 781 F.2d at 898-99. Whether a reference is publicly
`
`accessible
`
`is determined on a case-by-case basis based on
`
`the “facts and
`
`circumstances surrounding the reference’s disclosure to members of the public.”
`
`Klopfenstein, 380 F.3d at 1350. A reference is considered publicly accessible if it was
`
`“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.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (2008)
`
`(quotation marks omitted).
`
`Prior cases have looked to a variety of factors when considering whether a
`
`reference was publicly accessible. In several cases involving references stored in
`
`libraries, we have considered whether the research tools available would have been
`
`sufficient to permit an interested researcher to locate and examine the reference. In
`
`Hall, for example, we held that a dissertation shelved in the stacks and indexed in the
`
`catalog at the Freiburg University library was a printed publication. 781 F.2d at 898,
`
`899-90. In contrast, the thesis at issue in In re Bayer was held not to have been publicly
`
`accessible as of the critical date because at that time it was uncataloged, unshelved,
`
`and could have been found in the library at the University of Toledo “only by one having
`
`been informed of its existence by the [author’s] faculty committee, and not by means of
`
`the customary research aids available in the library.” 568 F.2d 1357, 1361 (CCPA
`
`1978).
`
`2009-1060
`
`6
`
`
`
`The differences in accessibility in Bayer and Hall were highlighted in Cronyn,
`
`where this court explained that “the critical difference between [Bayer and Hall] that
`
`explains the different results is that on the critical date in Bayer the thesis was
`
`‘uncatalogued and unshelved’ and therefore not accessible to the public, whereas in
`
`Hall the ‘dissertation was accessible’ because it had been indexed, cataloged and
`
`shelved.” 890 F.2d at 1161. At issue in Cronyn was a student’s thesis housed in the
`
`main campus library and the chemistry department library at Reed College. Each
`
`library contained a collection of student theses and a corresponding set of index cards
`
`that listed the title and author of each thesis. Id. at 1159. The index cards were filed
`
`alphabetically by the author’s last name, which, this court noted, “bears no relationship
`
`to the subject of the student’s thesis.” Id. at 1161. Although the index cards and the
`
`student theses were available for public examination, this court held that the theses
`
`were not publicly accessible because “they had not been either cataloged or indexed in
`
`a meaningful way.” Id.
`
`While cataloging and indexing have played a significant role in our cases
`
`involving library references, we have explained that neither cataloging nor indexing is a
`
`necessary condition for a reference to be publicly accessible. See Klopfenstein, 380
`
`F.3d at 1348 (“[Our cases] do not limit this court to finding something to be a ‘printed
`
`publication’ only when there is distribution and/or indexing.”). Depending on the
`
`circumstances surrounding the disclosure, a variety of factors may be useful in
`
`determining whether a reference was publicly accessible. See, e.g., id. at 1350 (listing
`
`four factors relevant to whether a slide presentation was a printed publication);
`
`Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1379 (Fed. Cir. 2006) (explaining
`
`2009-1060
`
`7
`
`
`
`that an application that resulted in the issuance of a published Canadian patent was
`
`publicly accessible because the issued patent served as a “roadmap to the application
`
`file”); see also id. at 1380 (Linn, J., dissenting) (opining that the application was not
`
`publicly accessible because “the text of an issued patent does not generally serve to
`
`guide researchers to the file history for a more expansive disclosure of the described
`
`invention, and it certainly does not lead researchers to the file history for disclosure of
`
`subject matter not described in the issued text”). In short, we must consider all of the
`
`facts and circumstances surrounding the disclosure and determine whether an
`
`interested researcher would have been sufficiently capable of finding the reference and
`
`examining its contents.
`
`
`
`With the framework of the public accessibility analysis established, we turn to the
`
`specifics of Dr. Lister’s appeal.
`
`B
`
`Several of the facts that are pertinent to our public accessibility analysis are not
`
`in dispute. First, the parties agree that the Lister manuscript discloses the claimed
`
`invention. Next, it is undisputed that the Copyright Office issued a certificate of
`
`registration for the Lister manuscript on July 18, 1994. It is also undisputed that the
`
`Copyright Office retained a copy of the manuscript in Washington, D.C., that was
`
`available upon request to be inspected by the public. Additionally, the parties agree
`
`that, absent limited special circumstances, the Copyright Office will neither provide
`
`copies of the manuscript nor permit individuals inspecting the document to make copies
`
`2009-1060
`
`8
`
`
`
`themselves.1 However, the parties do not agree as to when, if ever, the manuscript was
`
`listed in a catalog or index that would have permitted an interested researcher to learn
`
`of its existence and locate it for inspection.
`
`Dr. Lister raises two arguments on appeal. First, he argues that even if the
`
`manuscript was sufficiently indexed so that an interested researcher could learn of its
`
`existence and relevance, the task of traveling to Washington, D.C., and inspecting the
`
`manuscript at the Library of Congress was too burdensome for it to have been
`
`considered publicly accessible. Second, he argues that the manuscript was not a
`
`printed publication as of the critical date because there is no evidence that it was
`
`included in a catalog or index at that time that would have permitted an interested
`
`researcher to discover it. We address each argument in turn.
`
`1. Availability for Inspection
`
`
`
`Dr. Lister analogizes this case to Northern Telecom, Inc. v. Datapoint Corp., 908
`
`F.2d 931, 936-37 (Fed. Cir. 1990), a case in which this court held that several
`
`documents relating to a military system for distributed computer processing of logistical
`
`data were not printed publications within the meaning of § 102(b) because they were
`
`not “generally available” to the interested public. According to Dr. Lister, the burden of
`
`traveling to Washington, D.C., and navigating what he describes as the “cumbersome
`
`procedures” necessary to gain access to the manuscript precludes a finding of general
`
`
`1
`Under 37 C.F.R. § 201.2(d)(2), the Copyright Office will provide copies of
`copyrighted works in only three circumstances: (1) the copyright holder provides written
`authorization; (2) a written request is filed by an attorney representing either a plaintiff or
`defendant in connection with litigation relating to the copyrighted work; or (3) the
`Copyright Office receives a court order for reproduction of a work that is the subject of
`litigation.
`
`
`2009-1060
`
`9
`
`
`
`availability. In support of his position, he cites a September 10, 2004 letter from the
`
`Copyright Office that states that it searched its records but did not find a single request
`
`for inspection of the manuscript. Additionally, Dr. Lister emphasizes that the Copyright
`
`Office is unable to provide copies of the manuscript to interested researchers. See 37
`
`C.F.R. § 201.2(d)(2). Thus, in Dr. Lister’s view, the difficulty of accessing the
`
`manuscript, combined with affirmative evidence that no one has ever requested to
`
`inspect it, demonstrates that the manuscript was effectively unavailable to the public.
`
`
`
`We cannot accept Dr. Lister’s argument. First, there is a critical difference
`
`between the requirements for obtaining access to the documents at issue in Northern
`
`Telecom and the steps that one must take to view the Lister manuscript at the Copyright
`
`Office. In Northern Telecom, the documents were housed within the library at Mitre
`
`Corporation, and “[a]ccess to the library was restricted to persons authorized by Mitre.”
`
`908 F.2d at 936. In contrast, in this case, any member of the public who submits a
`
`proper request is capable of gaining access to the manuscript without any need for
`
`special authorization. Second, we have previously recognized that a reference can be
`
`considered publicly accessible even if gaining access to it might require a significant
`
`amount of travel. See Hall, 781 F.2d at 899-900 (holding that a copy of a dissertation
`
`shelved in a library in Germany was a printed publication). Additionally, as the Board
`
`noted, an interested person could hire someone local to inspect the manuscript on their
`
`behalf. Finally, our cases have held that once accessibility is shown, it is unnecessary
`
`to show that anyone actually inspected the reference. See, e.g., SRI, 511 F.3d at 1197
`
`(“[A]ctual retrieval of a publication is not a requirement for public accessibility . . . .”);
`
`Constant, 848 F.2d at 1569 (“Accessibility goes to the issue of whether interested
`
`2009-1060
`
`10
`
`
`
`members of the relevant public could obtain the information if they wanted to. If
`
`accessibility is proved, there is no requirement to show that particular members of the
`
`public actually received the information.”). Finally, we agree with the Board that an
`
`interested researcher would be able to gain and retain an understanding of Dr. Lister’s
`
`invention upon inspection of the manuscript and without any need to obtain a copy.
`
`2. Existence and Adequacy of an Index
`
`
`
`The above conclusion that the Lister manuscript was available at the Copyright
`
`Office for inspection by any interested person does not end our inquiry. We must also
`
`consider whether anyone would have been able to learn of its existence and potential
`
`relevance prior to the critical date. Dr. Lister argues that this criterion is not met for two
`
`reasons. First, he asserts that the catalogs and databases relied upon by the Board
`
`were not sufficiently searchable to lead an interested researcher to the manuscript.
`
`Second, he argues that even if some of the catalogs and databases were adequate,
`
`there is no evidence that the manuscript was in fact listed in any of them prior to the
`
`critical date.
`
`
`
`The parties agree that the only evidence in the record pertaining to the cataloging
`
`or indexing of the Lister manuscript is a statement made by Dr. Lister in an Information
`
`Disclosure Statement (“IDS”) filed with the USPTO during prosecution of his application.
`
`See
`
`Oral
`
`Arg.,
`
`20:31-47,
`
`June
`
`4,
`
`2009;
`
`available
`
`at
`
`http://oralarguments.cafc.uscourts.gov/mp3/2009-1060.mp3.
`
`
`
`In relevant part,
`
`that
`
`statement reads:
`
`the
`the Copyright Office maintains a public record of
`[A]lthough
`registrations of copyrighted works, searching of the catalog cannot be
`done by subject. See U.S. Copyright Office, How to Investigate The
`Copyright Status of a Work 4, Circular 22, Jan. 1991 (visited Dec. 30,
`
`2009-1060
`
`11
`
`
`
`1997) <http://lcweb.loc.gov/copyright/circs/circ22> (“The Copyright Office
`does not maintain any listings of works by subject”). Effective with
`registrations made since 1978, copyright registration information is
`available to the public through an automated catalog, accessible either at
`the Library of Congress or over the Internet. [Id. at 3] Searching of the
`automated catalog can be performed by the first word in the title of the
`work or by the author’s last name. However, the automated catalog does
`not enable subject matter searching or key word searching of the text of
`deposits. Telephone Interview with Copyright Information Specialist, U.S.
`Copyright Office (Jan. 6, 1998). . . .
`
`Applicant further submits that any copyright information available
`through computerized databases such as DIALOG is not sufficiently
`indexed to make Applicant’s deposited work § 102(b) prior art. The
`information contained in these databases comes directly from the Library
`of Congress, and therefore is available in essentially the exact same
`format as found in the automated catalog of the Library of Congress.
`Telephone Interview with Linda Jarmy, Catalog Distribution Service,
`Library of Congress (Jan. 9, 1998). Computerized searching in these
`databases does not offer subject matter searching of copyright
`registrations. The only additional feature offered by computerized
`searching, such as in the WESTLAW database, is the ability to search the
`title of works using key words.
`
`
`J.A. 122-23 (footnote omitted).
`
`
`
`As stated in the IDS and confirmed by the parties at oral argument, the
`
`undisputed facts relating to the indexing of the manuscript are summarized as follows.
`
`There are three relevant databases, the Copyright Office’s automated catalog and two
`
`commercial databases, Westlaw and Dialog. The automated catalog was not sorted by
`
`subject matter and could only be searched by either the author’s last name or the first
`
`word of the title of the work. Westlaw and Dialog obtained the automated catalog data
`
`from the Copyright Office and entered it into their own databases. Users of the Westlaw
`
`and Dialog databases could perform keyword searches of the titles, but not the full
`
`texts, of the works.
`
`
`
`Relying on Cronyn, Dr. Lister argues that none of the databases indexed or
`
`cataloged the manuscript in a “meaningful way” that would permit a researcher to locate
`
`2009-1060
`
`12
`
`
`
`it. See 890 F.2d at 1161. With respect to the Copyright Office’s automated catalog, he
`
`asserts that neither searching by author nor the first word in the title (“Advanced”) would
`
`guide a researcher interested in his golfing method to the manuscript. At oral argument,
`
`the government conceded that the automated catalog alone would have been
`
`insufficient to support a finding of public accessibility. Oral Arg. at 18:48-19:08, 29:47-
`
`30:05; cf. Cronyn, 890 F.2d at 1161 (“Here, the only research aid was the student’s
`
`name, which, of course, bears no relationship to the subject of the student’s thesis.”).
`
`Turning to the Westlaw and Dialog commercial databases, which, unlike the
`
`Copyright Office’s automated catalog, permit the searching of titles by keyword, Dr.
`
`Lister argues that the Board erred by concluding that a researcher would have found the
`
`manuscript by searching for the word “golf” in combination with the word “handicap.”
`
`Dr. Lister criticizes the Board’s conclusion as not taking into account the possibility that
`
`such a search would have either inundated the researcher with hundreds or thousands
`
`of irrelevant results or failed to retrieve relevant documents that happened not to include
`
`both words in their title. Additionally, he suggests that the term “handicap” is not a good
`
`descriptor of the invention because it is not used in any of the claims and that an
`
`interested researcher would have used other search terms, such as “tee” or “ball,” which
`
`would not have yielded the manuscript.
`
`Dr. Lister attempts to impose too rigid of a test for whether an interested
`
`researcher could find a reference. The question is not whether an individual, selecting
`
`terms from the claim language, could execute a single keyword search that would yield
`
`all relevant references including the anticipatory reference at issue. Rather, our inquiry
`
`is whether it could be located by “persons interested and ordinarily skilled in the subject
`
`2009-1060
`
`13
`
`
`
`matter or art exercising reasonable diligence.” Kyocera, 545 F.3d at 1350 (emphasis
`
`added) (quotation marks omitted). A reasonably diligent researcher with access to a
`
`database that permits the searching of titles by keyword would be able to attempt
`
`several searches using a variety of keyword combinations. We agree with the Board
`
`that an individual interested in ways to expedite the game of golf and make it easier for
`
`casual players would be inclined to use “handicap” as a search term. Indeed, Dr. Lister
`
`used the term in his specification to describe his invention. See, e.g., J.A. 81 (“In
`
`accordance with one embodiment the present invention provides . . . a golf handicap
`
`method (T Handicap) which generally involves the unrestricted use of teeing the ball
`
`after the first shot, except in hazards and greens.”). Regardless of whether Dr. Lister
`
`views other search terms as more descriptive of his invention, a reasonably diligent
`
`researcher would have searched
`
`for
`
`“golf”
`
`in combination with “handicap.”2
`
`Accordingly, we conclude that the Lister manuscript was publicly accessible as of the
`
`date that it was included in either Westlaw or Dialog, the databases that permitted
`
`keyword searching of titles.
`
`In order for the manuscript to be a bar to patentability under § 102(b), it must
`
`have been publicly accessible more than one year prior to Dr. Lister filing his application
`
`on August 5, 1996. Dr. Lister argues that there is no evidence that it was in fact
`
`included in either Westlaw or Dialog prior to the critical date.3 See Manual of Patent
`
`
`2
`Because there is no evidence in the record suggesting that such a search
`would have yielded an unmanageable number of references, we need not decide
`whether in some circumstances an overwhelming number of search results might
`warrant a conclusion that a particular reference included in the list was not publicly
`accessible.
`3
`The government argues that Dr. Lister waived this argument by failing to
`raise it before the Board. Although it may not have been the primary focus of the brief
`
`2009-1060
`
`14
`
`
`
`Examining Procedures § 2128 (“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).”). The government offers two
`
`responses, neither of which is persuasive.
`
`First, it asserts that Dr. Lister’s IDS provides substantial evidence that the
`
`manuscript was listed in the commercial databases prior to the critical date. At oral
`
`argument, the government relied on the portion of the IDS stating that “[t]he information
`
`contained in [the commercial] databases comes directly from the Library of Congress.”
`
`J.A. 123 (emphasis added); see Oral Arg. at 21:25-24:10. In the government’s view, the
`
`use of the word “directly” is sufficient evidence that the manuscript was listed in either
`
`Westlaw or Dialog shortly after the Copyright Office issued Dr. Lister’s certificate of
`
`registration on July 18, 1994. We disagree. We see nothing in the IDS that speaks to
`
`the date on which the Lister manuscript was incorporated into the Westlaw and Dialog
`
`databases. When pressed to identify such a date at oral argument, the government’s
`
`only answer was “directly around the time of the Copyright Office’s housing [of the
`
`manuscript].” Oral Arg. at 23:48-24:10. The government asks us to read too much into
`
`the word “directly.” There is no indication that that portion of the IDS was meant to
`
`address the timing of the database updates and, indeed, Westlaw or Dialog could
`
`acquire the catalog information “directly from the Library of Congress” ten years after it
`
`
`he submitted to the Board, we nevertheless find that the brief sufficiently expressed Dr.
`Lister’s disagreement with the examiner’s finding that the manuscript was listed in a
`keyword searchable database prior to the critical date. See J.A. 296-98.
`
`2009-1060
`
`15
`
`
`
`was first generated for the Copyright Office automated catalog. Further, there is no
`
`other evidence that speaks to the timing or process by which Westlaw or Dialog
`
`incorporated the Copyright Office’s updated automated catalog information into their
`
`databases. Although “evidence establishing a specific date of cataloging” was not
`
`required in Hall, in that case we held that “competent evidence of the general library
`
`practice” of cataloging and shelving established that the thesis became accessible prior
`
`to the critical date. 781 F.2d at 899. In contrast, in this case the government has not
`
`identified any evidence of the general practice of the Copyright Office, Westlaw, or
`
`Dialog with regard to database updates. Absent such evidence, we have no basis to
`
`conclude that the manuscript was publicly accessible prior to the critical date.
`
`The government’s second argument is that it made a prima facie showing that
`
`the manuscript was included in the commercial databases shortly after the Copyright
`
`Office granted the certificate of registration and the burden has shifted to Dr. Lister to
`
`present evidence that it was not in either database before the critical date. Because he
`
`has presented no such evidence, the government asserts that Dr. Lister has failed to
`
`meet his burden and it was proper for the Board to make a finding in the government’s
`
`favor. We do not agree that the government has established a prima facie case that
`
`warrants shifting the burden to Dr. Lister. Essentially, the evidence shows that at some
`
`point in time Westlaw and Dialog incorporated the Copyright Office’s automated catalog
`
`information about the Lister manuscript into their own databases. There is no indication
`
`as to when that occurred or whether it was prior to the critical date. We see little
`
`difference between the evidence in this case and a situation in which an examiner
`
`comes across an undated reference that discloses an invention for which an applicant is
`
`2009-1060
`
`16
`
`
`
`seeking the patent. We surely would not view the mere existence of the reference in
`
`the latter scenario as prima facie evidence that it was available prior to the applicant’s
`
`critical date. The government urges us that it is appropriate in this case to presume that
`
`the manuscript information was added to the Westlaw and Dialog databases prior to the
`
`critical date because the critical date was more than a year after the certificate of
`
`registration was granted. However, absent