Sunday, August 15, 2010

BPAI reverses 102(f) rejection based on publication with single author in application with multiple inventors (Ex parte Cherepinsky)

Takeaway: In re Cherepinsky involved a § 102(f) (did not invent) rejection. The Examiner's rationale for the rejection was that multiple inventors were listed, yet the subject matter of the application was based on a Ph.D. thesis with a single author. The Board reversed, finding that a scientific publication is not evidence of "invention," so that the published thesis did not provide adequate evidence that the listed inventors did not invent.

Details: 35 USC 102(f) states:
A person shall be entitled to a patent unless -
(f) he did not himself invent the subject matter sought to be patented.

My two cents: The Board reached the right conclusion, but it's reasoning was weird.

Since the rejection was under § 102(f), the issue in this case was whether the named inventors were the true inventors, i.e. who invented. The Board relied solely on In re Katz to reverse the rejection, citing it for the proposition that a scientific publication is not evidence of " 'invention' as that term is used in the patent statutes." (In re Katz, 687 F.2d 450, 454 (C.C.P.A. 1982)).

Yet the rejection at issue in In re Katz was § 102(g) (first to invent), and the Federal Circuit's holding was "disclosure in a publication does not prove that any 'invention' within the meaning of § 102(g) has ever been [reduced to practice] by anyone." So the Board used a case about whether invention occurred to decide an issue of who invented.

The Examiner seemed to confuse authorship with inventorship, and simply did not present a prima facie case that Applicants "did not invent." The Applicant said as much in the Appeal Brief:
While the disclosure may be substantially based on [Cherepinsky's Ph.D.] thesis, the claims determinine inventorship. The inventors of the claimed subject matter are those named herein.


  1. Although the Board found (properly) that the specification and its references are not the basis for determining inventorship, this case raises an interesting question of academic honesty.

    One's PhD thesis is supposed to represent your original research results. I wonder how the OTHER inventors are recognized in the thesis. If they contributed enough to the research to be inventors, then they should be appropriately credited in the thesis (to which credits the examiner could have been pointed). If, on the other hand, they are not credited, then has Cherepinsky committed a significant bit of academic dishonesty?

  2. I had a similar case where another professor helped the inventors in my case to write their paper up but supposedly did not invent. They filed a Dec and my primary at the time said we ought to just accept it.

  3. Another case that makes one question what these "appeal conferees" are doing, and what qualifications they have for these positions they hold (QAS, SPE, SPRE, etc.)

    Wouldn't you think that if you were going to make a rejection that is a rather rare rejection, e.g. 102(f), that one would make some inquiry into what is actually required to make a prima facie case?

    Another case of wasting the applicant's and BPAI's time. How the heck is the BPAI supposed to reduce its backlog when they have to spend time on slam dunk reversals like this? This case never should have gotten anywhere near appeal. It should have been allowed about 3 years ago.