In Re Lister

583 F.3d 1307 (Fed. Cir. 2009)

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Nature of the Case

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Facts

P is a Ph.D. clinical psychologist and an avid sportsman. P competed regularly in organized golf tournaments. P grew tired of what he describes as the horrendously slow pace of a game of golf. P concluded 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. P created a manuscript entitled 'Advanced Handicap Alternatives for Golf.' P 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. Otherwise, the game would be played the same, including play in hazards of sand and water, where a tee would not be advocated or permitted. P decided to seek intellectual property protection for his method of playing golf. P, in pro se, submitted the manuscript to the Copyright Office on July 4, 1994. The Office issued a certificate of registration on July 18, 1994. On August 5, 1996, he filed an application with the Patent and Trademark Office. D has gone through several rounds of rejections and amendments with the examiner and two appeals to the Board. In the most recent final rejection, issued on January 31, 2003, the examiner rejected claims 21-25 as anticipated by P's manuscript under 35 U.S.C. §§ 102(a) and 102(b). The examiner held 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. 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. P could not have disclosed his own invention before he invented it. As to §102(b), P's manuscript must have been 'publicly accessible' in order to have been a printed publication. The Board 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.' An individual seeking to view the manuscript would have been able to do so by visiting the Copyright Office. It rejected P'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. The Board concluded that 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. P argued that the manuscript was not publicly accessible because there was no evidence that it was actually accessed by anyone. The Board held that evidence of actual access was not a requirement. P appealed.