Board decisions involving the Wayback Machine to show status as prior art (Part II)

In my last post (here), I discussed Examiner usage of an archived web page as a reference, and noted that the Board generally finds this usage acceptable. That post also illustrated a few unsuccessful arguments against this use of archived web pages in a rejection.

Today's post deals with the relationship between the actual reference, as identified by the Examiner, and the archive pages produced by the Examiner. In today's cases, the Board focused on corroboration between the archive pages and the asserted reference -- in other words, did the evidence show that the pages from the archive (dated before the critical date) actually correspond to the reference identified in the rejection (dated after the critical date). The Board upheld prior art status only when the archive pages in the record were identifiable as earlier versions of the reference page.


In Ex parte Benveniste, the Board reversed because the Examiner had not shown corroboration between the web page retrieved during examination and the archived version. During prosecution, the reference was referred to as "http://www.motivators.com/Promotional-Custom-SafetyConeStressball-6143.html#Tab12." The List of References Cited listed two non-patent documents:

• "Internet Wayback Machine" [online] Retrieved on 2012-03-13 [during examination]. Retrieved From: http://web.archive.org/web/20050430223104/http://www.motivators.com/6143-promotional-item.html
• "Motivators Promotional Products" [online] retrieved on 2012-03-13 [during examination]. Retrieved from http://www.motivators.com/Promotional-Custom-ConstructionConeStressReliever-6143.html.   Tab12.

On appeal, the Applicant argued public dissemination. ("The Examiner has not shown that a person in the field of emergency repair plugs for boat hulls would have come across the cited reference prior to the critical date.") The Applicant acknowledged the Examiner's reliance on the Wayback Machine (rather than the current Motivators page) to show prior art status, but noted that "Appellants have not been successful at accessing the web page address provide by the Examiner."

The Board reversed on the basis of a lack of corroboration between the web page retrieved during examination and the web page retrieved via the Wayback Machine. The Board explained:

The page cited to by the Examiner in the Final Office action currently redirects to: http://www.motivators.com/Promotional-Custom-ConstructionConeStressReliever-6143.html. The Examiner cites http://web.archive.org/web/20050430223104/http://www.motivators.com/6143-promotional-item.html as evidence of the effective date of the www.motivators.com page entered into the file wrapper Mar. 23, 2012. There is nothing corroborating the page copied by the Examiner with the date of the page provided by the Wayback Machine.
(Emphasis Added.)

The Board found that without such corroboration, the Examiner had not shown that the Motivator reference was prior art.


The Applicant in Ex parte Aguilera tried to use date information in the footer of the archive print out to show a lack of corroboration, but the Board found the Applicant had misunderstood the date. During prosecution, the reference was first identified in the Office Action as "Minwen Ji, 'Instant Snapshots in a Federated Array of Bricks,' Internet Systems and Storage Laboratory, HP Lab, Palo Alto, January 28, 2005." The Applicant traversed, noting that Ji itself referred to the date as an "internal accession date," and while Ji indicated that the publication was "approved for external publication," Ji did not give a publication date.

The next Office Action updated the list of References Cited to include "Internet Archive Wayback Machine April 20, 2005" and included 2 pages from the Wayback Machine. The Response to Arguments section then explained that the Wayback Machine showed that the reference was available on the HP Technical Reports website in Feb. 2005 (before the critical date).

The Applicant filed an appeal and repeated earlier arguments. Notably, the Appeal Brief did not address the Wayback Machine evidence.

The rejection in the Examiner's Answer once again identified the reference using a Jan. 2005 date, but the Response to Arguments section "reiterated" that "the HP website and the Internet Archive Wayback Machine both provide evidence that Ji's  reference was available to the public during the year of 2005." The Answer also included a page from the Wayback Machine, listing bibilographic information and an abstract for the Ji publication. The footer on this page identified the source (a Wayback Machine URL) and also a current date (2009).

Finally, the Answer also included a "HP Technical Reports" page showing a list of technical reports, including "HPL-2005-15 - Instant Snapshots in a Federated Array of Bricks ; Ji, Minwen." According to the Examiner, the presence of "2005" in the document name  indicated that "Ji's reference was available to the public as shown by the HP website in 2005." The Examiner further asserted that the Technical Reports page was obtained using the link http://www.hpl.hp.com/techreports/2005, and the presence of "2005" in the URL was a further indication of the prior art status of the Ji publication. 


The Applicant filed a Reply Brief addressing both the Wayback Machine evidence and the HP Technical Reports page. According to the Applicant, the current date (2009) on the Wayback Machine print-out "indicates the publication date of the version being shown". Finally, the Applicant argued that the presence of the year 2005 in a URL does not show the reference was publically available in 2005, but showed only that certain references that available at the time of examination had a "written date" of 2005.

The Board found that the Examiner's use of the Wayback Machine was enough evidence that the Ji reference was prior art:

We find the Appellants’ arguments unpersuasive regarding the Wayback Machine evidence as one of ordinary skill in the art would understand that the date highlighted by Appellants in the bottom right hand corner, i.e., 12/22/2009, merely indicates a date of printing a hardcopy, not the date of publication. Furthermore, the Archive evidence presented by the Examiner clearly shows dates as early as 2005.

In Ex parte Rowse, the Board found that the URL of the archived pages identified those pages as earlier version of the reference. The rejection identified the web page reference as "Xactware.com, retrieved from the Internet Archive Wayback Machine <archive.com>, 6/29/1998." The Applicant traversed the rejection by arguing that "the Internet Archive is not prior art" because "the 'Internet Archive Wayback Machine' from which the Xactware reference was taken was not publicly available until [after Applicant's filing date.]" In the next Office Action, the Examiner clarified that "the web page (and date published) is meant to serve as prior art -- not the internet archive."

On appeal, the Board analyzed the Examiner's prima facie showing of Xactware as prior art. The Board first noted the reference identified by the Examiner was the archived Xactware web pages, not the pages retrieved from the Xactware site at the time of examination. The Board further noted that the pages themselves showed an archive date:

Based on the Uniform Resource Locator (URL) content at the bottom of each page, pages 1 through 15, as numbered by the Examiner, appear to represent web pages that were published (publicly available) on the “xactware.com” site in the year 1998.

In view of this prima facie showing that the reference was prior art, the Board looked to the Applicant for a rebuttal and found none:

     In the instant case, Appellants have not provided any evidence to show that the website from which Xactware was retrieved is not reliable as to presumed dates of publication. Nor have Appellants provided any other evidence tending to show that the content described by Xactware was not publicly available on the presumed dates.
.... On this record, we conclude that the Examiner properly considered Xactware to represent prior art with respect to the invention of the rejected claims.

My two cents: If you're not familiar with the Wayback Machine, here's a very brief explanation of the interface.

Typing in a web address from the main page (internetarchive.org) gives you a timeline/calendar view of all the archived pages for that site.

Clicking on a specific date retrieves the page as it existed on that past date:

Note that the URL of the retrieved page in the browser address bar
https://web.archive.org/web/20110820040341/http://www.allthingspros.blogspot.com/
encodes the name of the archived site and the archive date.

Board decisions involving the Wayback Machine to show status as prior art (Part I)

Long ago I wrote a series of post discussing the use of web pages as prior art. In one of those posts (here), I mentioned the use of www.archive.org  (a.k.a. the "Wayback Machine"), which is an archive site of web pages as they existed in the past. An Examiner can't allege that a web page was available as of your application's past filing date if all he has is the page retrieved as of the examination date, However, he can use the Wayback Machine to navigate to that same web page, retrieve a copy as it existed as of a particular past date, and use the page retrieved via the Wayback Machine as the reference.

Since my original post back in 2009, I've come across a few more cases where the Applicant tried to disqualify a reference on the basis of its retrieval via the Wayback Machine. Generally, it's a losing battle: as long as the Examiner identifies the page and retrieval date in the proper manner, the Board views such references as "printed publications" under § 102(b) or § 102(a).  In today's post, I'll discuss a few of these Board decisions, and highlight some unpersuasive arguments made by Applicants.

To qualify as a "printed publication," case law requires that the reference be disseminated to persons in the art. For example, MPEP § 2128 states that "[a] reference is proven to be a 'printed publication' 'upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981)."

In Ex parte Rowse, the Applicant attacked the Examiner's use of the Wayback Machine on this basis. The Applicant argued that "the Examiner has provided no evidence that the Xactware reference qualifies as a printed publication other than asserting that 'the Internet Archive is a tool used to access internet pages that were published and publicly accessible in the well-documented past.' " Next, the Applicant referred to the "dissemination" requirement in MPEP § 2128, and then continued as follows:

Regarding "public dissemination," pages on the World Wide Web are not "disseminated" - they are "browsed" using a "Web browser" - the antithesis of dissemination. Many web pages are never even browsed. Regardless, the Examiner has submitted no evidence to show that the Xactware reference was ever "disseminated" to members of the public, or "browsed" by members of the public, prior to the applicants' date of invention. Regarding "public availability," the Examiner has made no showing that the Xactware reference was catalogued, indexed or searchable in any publically-available database prior to the applicants' date of invention.
(Emphasis added.)

The Board in Rowse found that the Examiner had made a prima facie case of the reference's status as prior art. The Board did not specifically address the dissemination argument, addressing instead the general argument that the Examiner had not provided evidence of publication. The Board first noted that in an ex parte proceeding, the rules of evidence are relaxed when demonstrating prima facie unpatentability. The Board then explained that

Appellants have not provided any evidence to show that the website from which Xactware was retrieved is not reliable as to presumed dates of publication. Nor have Appellants provided any other evidence tending to show that the content described by Xactware was not publicly available on the presumed dates.
(Emphasis added.)

The Board has also been unpersuaded by Applicant arguments that the Wayback Machine is not appropriate to show prior art status because it's not reliable. In Ex parte Hicks, the Applicant argued that “per the explicit terms of use for the Internet Archive Wayback Machine [mentioned on the archive site itself], the January 21, 2005 archive is not guaranteed to be accurate, current, complete, reliable, secure or error-free.” (Emphasis added.) The Applicant further asserted that "the Internet Archive does not guarantee that the data listed for January 21, 2005 is what was actually archived or if anything at all was even archived for that date." The Applicant concluded that the Wayback Machine is therefore "not a valid or reliable resource for establishing prior art."

The Examiner's Answer noted that Applicant had not provided any evidence to demonstrate that the archive date was invalid or that the web page was not accessible to persons of skill in the art. The Applicant filed a Reply Brief stating that:

Notwithstanding the well-recognized difficulty of proving a negative, Appellants' representative has performed an Internet search and has been unable to locate any other evidence indicating that the FFHD reference was  published  prior  to Appellants'  filing date. The only evidence of record in support of a prior publication date is from a single third party source that per it's own terms of use may not be accurate.

The Board in Hicks appeared to address the Applicant's unreliability argument by shifting the burden to the Applicant:

Electronic documents are archived on the Wayback Machine and are dated as of the archived date of the website. Appellants do not indicate that the archive date provided for FFHD by the Wayback Machine was generated other than in the normal course of operation of this site. There is no indication that this date was arbitrarily assigned or that the origin of document itself is suspect.

The Applicant in Hicks also tried another argument, characterizing the "URL date indicated by the Internet Archive Wayback Machine" as "nothing more than a third party assertion."

A publication date cannot be established based on an uncorroborated third party assertion unsupported by any affidavit or declaration. If all that was required to establish a publication date was a third party assertion unsupported by any affidavit or declaration, then any reference could be turned into prior art merely by finding a third party willing to place a prior publication date on the document. Such uncorroborated third party assertions unsupported by any affidavit or declaration are not sufficient evidence.  If an Applicant  wishes  to  submit an assertion by a third  party as evidence, e.g., in support of a Rule 131 or 132 submission, then the third party assertion is required to be supported by an affidavit or declaration. The Examiner should be held to no less of a standard. Here, the Examiner has not obtained any affidavit or declaration from the Internet Archive Wayback Machine supporting the publication date of  the FFHD reference. Nor has any other corroborating evidence been supplied by the Examiner despite repeated challenges  by the Applicant.

The Board in Hicks was not persuaded by this argument either. After noting that a PTO proceeding is not bound by the stricter rules of evidence of a judicial proceeding, the Board concluded that "without more, we decline to agree with Appellants that reliance by the Examiner on FFHD was improper."

As noted above, the Board generally allows the use of the Wayback Machine to show prior art status,
as long as the Examiner identifies the page and retrieval date in the proper manner. In a future post, I'll discuss a few cases where proper identification was at issue.