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 -

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(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.