In Mark Bruckelmyer v. Ground Heaters, (Fed. Cir., April 20, 2006), the court held that figures 3 and 4 of Canadian Patent 1,158,119 application were "printed publications" under 35 U.S.C. § 102(b) even though the application was not actually disseminated during the relevant prior art time frame and the figures were withdrawn before issuance of the patent.
According to Judge Lourie:
Equally unpersuasive is Bruckelmyer’s argument that figures 3 and 4 were"removed" from the application during prosecution, and thus a person of skill inthe art would not have looked past the ’119 patent in searching for the subjectmatter of the patents in suit. As a matter of undisputed fact, the ’119 patenteedid not physically remove figures 3 and 4 from the file wrapper, but merelycancelled the subject matter figures from the patent during prosecution. Thefigures were thus still in the file, although they did not appear in the issuedpatent. The declaration from Bruckelmyer’s Canadian patent law practitionerexplains that when subject matter is cancelled during prosecution a replacementpage may be put in front of the page containing the cancelled matter, but thepage containing the cancelled original matter still remains in the file wrapper.Moreover, for the reasons that we articulated above, it does not matter thatfigures 3 and 4 do not appear in the ’119 patent because no reasonable trier offact could find that there was not sufficient disclosure in the patent to allowone skilled in the art to locate the figures contained in the application.
Equally unpersuasive is Bruckelmyer’s argument that figures 3 and 4 were"removed" from the application during prosecution, and thus a person of skill inthe art would not have looked past the ’119 patent in searching for the subjectmatter of the patents in suit. As a matter of undisputed fact, the ’119 patenteedid not physically remove figures 3 and 4 from the file wrapper, but merelycancelled the subject matter figures from the patent during prosecution. Thefigures were thus still in the file, although they did not appear in the issuedpatent. The declaration from Bruckelmyer’s Canadian patent law practitionerexplains that when subject matter is cancelled during prosecution a replacementpage may be put in front of the page containing the cancelled matter, but thepage containing the cancelled original matter still remains in the file wrapper.Moreover, for the reasons that we articulated above, it does not matter thatfigures 3 and 4 do not appear in the ’119 patent because no reasonable trier offact could find that there was not sufficient disclosure in the patent to allowone skilled in the art to locate the figures contained in the application.
In his dissent, Circuit Judge Linn noted that
It is not entirely sound to view the issued [Canadian] patent as a roadmap tothe underlying file history. . . . While it is commonplace for parties toexamine patent file histories for guidance on matters of claim interpretation,surrender, estoppel, disclaimer, or disavowal, researchers normally expect thetext of printed patents to correspond to and be coextensive with theapplications from which they have been issued. In that sense, the text of anissued patent does not generally serve to guide researchers to the file historyfor a more expansive disclosure of the described invention, and it certainlydoes not lead researchers to the file history for disclosure of subject matternot described in the issued text.”
It is not entirely sound to view the issued [Canadian] patent as a roadmap tothe underlying file history. . . . While it is commonplace for parties toexamine patent file histories for guidance on matters of claim interpretation,surrender, estoppel, disclaimer, or disavowal, researchers normally expect thetext of printed patents to correspond to and be coextensive with theapplications from which they have been issued. In that sense, the text of anissued patent does not generally serve to guide researchers to the file historyfor a more expansive disclosure of the described invention, and it certainlydoes not lead researchers to the file history for disclosure of subject matternot described in the issued text.”
Rodney D. Ryder
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