(1) The PTO must do more than state that a claim term is not literally recited in the specification to establish a lack of written description support for that term. Here, for example, the specification was found to adequately support the terms “endorsement tag” and “token” added during prosecution even though those terms were absent from the specification per se. “We are … troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding.” This would be a good case to consult and cite in response to a written description rejection for lack literal support. (2) It cannot be automatically inferred, without specific evidence, that a reference available only via a hyperlink located on a personal webpage would have been indexed and available via a search engine so as to constitute a printed publication under § 102(b). Here, for example, a doctoral student’s thesis that she posted on her personal website was found to be inadmissible as prior art simply because a search engine could have theoretically led one skilled in the art to her personal website. “[It is unreasonable to] automatically infer that [a] webpage was ‘indexed … (through search engines or otherwise)’ and thus locatable by a search engine.” This would be a good case to consult and cite in response to the assertion of a reference as prior art when that reference was available as of the critical date only via a personal website.
Background / Facts: The patents on appeal here from IPR proceedings at the PTO are directed to peer-to-peer advertising systems that use mobile communication devices. During prosecution, the patentee added the terms “endorsement tag” and “token” to the independent claims, which the parties agreed were absent from the specification per se but should both be construed as an executable “link, such as a hyperlink,” which is described in the specification. While acknowledging that “the specification need not explicitly use the term[s] or otherwise describe exactly the subject matter claimed,” the PTO nevertheless concluded that the “Petitioner provided the most persuasive evidence of all [for lack of written description support]; that the [] application … does not recite ‘endorsement tag’ [or ‘token’].” For anticipation purposes, the closest cited reference was a doctoral thesis that a graduate student made available via a hyperlink on her personal webpage.
Issue(s): (1) Whether the added terms “endorsement tag” and “token” lack written description support for not being recited in the original specification. (2) Whether a research paper available only via a hyperlink located on a personal webpage constitutes a printed publication under § 102(b).
Holding(s): (1) No. Emphasizing that for written description support the specification “need not [use] the exact terms appearing in the claim,” the court stated that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding.” Even if the PTO had relied on evidence seeking to establish that the newly added terms had slightly different meanings than the term “link” in the specification, “it would not provide substantial evidence support for the Board’s finding; [such evidence] is abstract and untethered from the context provided by the [] patent.” (2) No. Citing a lack of “evidence that the ordinarily skilled artisan would know of [the] personal webpage or its web address,” the court dismissed the idea that one could “automatically infer that [the] webpage was ‘indexed … (through search engines or otherwise)’ and thus locatable by a search engine.” Moreover, even if other publications may have led a reader to be aware of the student author as a relevant person in the field, “there is no evidence that it would have led a reader to [the student’s] personal website” by providing “a sufficiently definite roadmap.” “An adequate roadmap need not give turn-by-turn directions, but should at least provide enough details from which we can determine that an interested party is reasonably certain to arrive at the destination: the potentially invalidating reference.”