Board of Patent Appeals and Interferences Case of Note

Designation of Drawings Discussed in Background Creates Presumption That Is Prior Art Under 35 U.S.C. §102

In Ex parte Ji-young Lee, Appeal No. 2006-2328 (February 23, 2007) (non-presidential), the application under appeal is a reissue of U.S. Patent 6,064,443, issued May 16, 2000, to Ji-Young Lee entitled “Method for Detecting and Separating Vertical and Horizontal Synchronous Signals from Computer System,” based on Application 08/880,675, filed June 23, 1997.   Among the issues on appeal was the final rejection of claim 58.

During prosecution, the applicant had amended Figures 1 and 2A-2C to replace the “Prior Art” label with the “Background Art.” When the Examiner contested this revision, the applicant successfully petitioned to have the change made.  Since the drawings were amended, the Examiner concluded that Figures 1 and 2A-2C were not “prior art” because Appellant identifies it as “Background Art.”

On its own initiative and after the existing rejection of claim 58 was reversed, the Board requested that the counsel for the applicant explain at oral argument “what was meant by ‘background art’ in Figures 1 and 2A-2C.”   While the Board was unclear on counsel’s answer, the Board interpreted counsel’s response to be that “prior art” is only an appropriate label where the depicted device is from a publication.    In response, the Board noted that non-publications can be prior art, such as prior art under 35 U.S.C. §§ 102(f)/103(a).  Since counsel was unable to provide a satisfactory explanation as to whether the “Background Art” in Figures 1 and 2A-2C were prior art under other categories of 35 U.S.C. §102, the Board then requested that counsel “submit a paper within a week clarifying the nature of the subject matter of Figures 1 and 2A-2C.”

After oral argument, counsel for the applicant responded by noting that the original correspondence had been destroyed, and that there was no evidence as to the source for the subject matter of the “Background Art” in Figures 1 and 2A-2C.  Instead, applicant argued:

  1. No section of § 102 disqualifies a patent application if the subject matter was based on what anyone else in the foreign country may or may not have known.
  2. § 102(f) does not concern itself with the knowledge “of another” regarding the subject mater sought to be patented.
  3. “Whether Figs, 1-2C constitute ‘Prior Art’ hinges only on an inquiry of whether or not the subject matter of Figs. 1-2C was published in this or a foreign country, or was known or used by others in this country.”

Based upon the above, the Board found that, when applicants describe a device or method in the background of the invention, the United States Patent and Trademark Office is entitled to presume that the device or method is not within the invention.  The presumption exists since there are multiple categories of prior art under 35 U.S.C. §102, such as 35 U.S.C. §102(f), which merely relate to prior development by another.  Moreover, applicants are in a better position to provide such information.  As set forth by the Board:


The issue is whether applicants can be required to admit or deny that the subject matter is “prior art.”  It is a common problem in the USPTO that applicants describe or label subject matter as “background art,” or “related art,” or as “conventional,” but do not “admit” that it is “prior art.”  That is the situation in this case.  The Examiner presumed that the figures labeled “Background Art” were not “Prior Art” because Appellant did not use that exact terminology.  Although terms like “background art” (or “related art” or “conventional” or some other term) suggest an admission that the subject matter is “prior art” to the applicant, the admission is not clear.  If subject matter designated “background art” (or some other term) is “prior art” or is evidence of knowledge of the level of skill in the art, it is manifestly highly relevant to the issue of patentability.  In our opinion, it is in the public interest for the USPTO to require applicants to admit or deny that the subject matter is “prior art.”


Therefore, the Board held that, subject to rebuttal by the applicant, any device or method described in the background of the invention is presumed to be eligible for use in a prior art combination under 35 U.S.C. §103.  Based upon this presumption and since no rebuttal was included in the record, the Board directed that a new obviousness rejection be made for claim 58 using the presumed prior art of FIGs. 1 and 2A-2C.


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