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Fed. Cir. Tees Off On Board's Evidence of Timing of Publication

ln re Lister, appeal no. 2009-1060 (Fed. Cir, Sept. 22, 2009) (link at bottom) the panel found that a manuscript by the inventor, “Advanced Handicap Alternatives for Golf” which he had sent into the Copyright Office some time prior to filing a patent application on his “method for playing an organized game of golf,” was sufficiently publicly accessible to qualify as a printed publication. The panel found that, while the Copyright Office’s catalog was not adequately searchable, the automated data had been entered into the Westlaw and Dialog databases. Unlike the Copyright Office “automated catalog,” these databases are keyword searchable, and that fact was sufficient for the court to hold that the manuscript was a printed publication under 102(b).

However, the court ultimately reversed and remanded, holding that the Examiner and the Board had not presented sufficient evidence as to when the manuscript was available to the interested public, i.e. when it was “listed” in either the Westlaw or Dialog databases. The court found the failure of proof analogous to the (improper) use by an Examiner of an “undated reference” that discloses a claimed inventor as prior art against the claims.

Probably of lower importance, but still interesting, is whether or not the claim to this “method” of playing a game would be patent-eligible under the Bilski “machine or transformation” test. The only step in the independent claim given in the opinion that is not a data gathering step that could be performed in the mind of the player (recording strokes and comparing numbers of strokes) is the step of giving the players permission “to raise or tee the ball up above turf level at any time during play” (not just at the first stroke of each hole, but not on the green or in “designated hazard areas”). I don’t see any matter being transformed into another state by letting players tee up the ball throughout the game (in fact, smooth turf is more likely to stay smooth). I also don’t see that the game is tied to any particular machine. A golf tee is a machine (a platform), I guess, but there are probably many different styles of golf tee that could (and probably have) been devised over the years. The claim does not positively recite that the ball is stroked and, in any case, does not say what it is hit with. Patentable subject matter? I think not!

However, the claim in question here does point out one application of the “M or T” test; it would eliminate patents on simple games. Under the courts’ interpretation of section 101, games are patentable, and that includes games as simple as tag or “rock, paper, scissors.” In contrast, the EPC cuts right to the chase and bars patents on “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers.” Art. 22. See, Paul Cole, “Fundamentals of Patent Drafting”, CIPA (2006) at Ch. 4.



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