Free Redacted Document - District Court of Delaware - Delaware

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EXHIBIT 12

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Period of "overlap" according to Prof. Robins

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EXHIBIT 13

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2128.01

MANUAL OF PATENT EXAMINING PROCEDURE

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. If the pub lication 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), although it may be relied upon to provide evidence regarding the state of the art. Examiners may ask the Scientific and Techni cal Information Center to find the earliest date of pub lication. 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 reason ably 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 rejec tion 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 Inter net Usage Policy pertaining to Internet searching and documenting search strategies. See MPEP § 707.05 for 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 [R-2]
> I.
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 shelv ing practices showed that a doctoral thesis deposited in university library would have been indexed, cata loged 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 the sis. 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 over ruled 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 doc ument, of which there is but one copy, whether it be

Rev. 2, May 2004

2100-70