## Facts

- Dr. Richard S. Lister created a golf-playing method allowing recreational golfers to tee the ball on most shots to speed play.
- He described the method in a manuscript titled “Advanced Handicap Alternatives for Golf” (the Lister manuscript).
- On July 4, 1994, Lister submitted the manuscript to the U.S. Copyright Office; on July 18, 1994, he received a certificate of registration.
- The Copyright Office retained a copy on file that could be inspected by the public upon request.
- On August 5, 1996, Lister filed a patent application claiming the golf method.
- During prosecution, the USPTO treated the Lister manuscript as a prior-art “printed publication” under 35 U.S.C. § 102(b), based on alleged public accessibility through (i) Copyright Office cataloging and (ii) commercial databases (Westlaw and Dialog) reportedly sourced from Library of Congress data.
- The record contained no evidence establishing when the manuscript became indexed or keyword-searchable in any catalog or commercial database, and no evidence of typical indexing timelines or practices for those systems.

## Issues

1. Whether substantial evidence supported the finding that the Lister manuscript was a “printed publication” under 35 U.S.C. § 102(b) because it was publicly accessible more than one year before the patent application filing date.

## Decision

- The Federal Circuit vacated the Board’s decision affirming the examiner’s § 102(b) rejection and remanded.
- The court held the record lacked substantial evidence that the manuscript was publicly accessible more than one year before August 5, 1996.
- The court accepted that keyword-searchable database indexing can establish public accessibility, but found no proof that such indexing occurred before the critical date.
- The court reiterated that proof of actual retrieval or reading is unnecessary once public accessibility is shown, but public accessibility itself must be supported by evidence rather than inference.

## Legal Principles

- A reference is a “printed publication” under § 102(b) if it was publicly accessible such that persons interested and ordinarily skilled in the art, exercising reasonable diligence, could locate it.
- Public accessibility may be established by indexing or cataloging that permits reasonably diligent researchers to find the reference, including through keyword-searchable commercial databases used by the relevant community.
- Physical availability in a repository can support public accessibility, but location alone is not dispositive; the proponent must show the work was meaningfully findable before the critical date.
- Once public accessibility is established, no showing is required that any person actually accessed the reference.
- An agency finding of a § 102(b) printed-publication bar must be supported by substantial evidence, including evidence of when and how the reference became discoverable.

## Conclusion

The Federal Circuit set aside the USPTO’s § 102(b) printed-publication determination because the evidentiary record did not show when the manuscript became searchable or otherwise discoverable by a reasonably diligent researcher before the one-year critical date, and remanded for further proceedings.


In re Lister, 583 F.3d 1307 (Fed. Cir. 2009)