Federal Circuit Affirms Rejection by Examiner Based on Incomplete Prior Art

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Federal CircuitThe Federal Circuit issued an interesting decision in In re Enhanced Security Research, LLC (No. 2013-1114) this week. The Patent Trial and Appeal Board (PTAB) affirmed an examiner’s rejection of certain claims of a patent as obvious during an ex parte reexamination based on a user manual that was missing pages and of dubious origins. The Federal Circuit, in a 2-1 decision, affirmed. What makes this case interesting is the discussion of the completeness and authenticity of the prior art considered by the Patent Office.


Enhanced Security Research (“ESR”) obtained a patent for “a computer security device and method for preventing unauthorized individuals from gaining access to a local computer network.” A third party who was in litigation with ESR requested reexamination based on two pieces of prior art—a user manual to a piece of software called NetStalker and a scholarly article. The use of the manual is at the heart of the issues in this case.

ESR challenged the propriety of the examiner relying on the manual based on the fact that pages were missing, it was not clear that this particular exemplar was available to the public, and it was not clear whether the manual was a draft. The third party requester provided an affidavit from the CEO of the company that produced the software attesting to its completeness (even though pages were clearly missing) and that it was a version available to the public. The CEO was not an uninterested party, however, as he was a paid expert for the third party requester in litigation against ESR.

The examiner, relying on a page from the manual, concluded that certain claims were obvious. Interestingly, many of the missing pages came from the same chapter as the page relied on by the examiner, including the pages immediately before and after that page.

The Majority Affirms

The majority of the Federal Circuit panel affirmed the decision of the examiner and PTAB that found that the information contained in the manual, when combined with the scholarly article, rendered certain claims of the patent obvious. The majority then went on to consider whether the examiner and PTAB should have relied on the manual as prior art.

They ultimately concluded that the manual was prior art. First, they noted that the standard of what is sufficiently “available to the public” for purposes of 35 U.S.C. § 102(a)(1) is a question of law based on underlying facts. Availability does not have to mean widely available—“a single cataloged thesis in one university library” is sufficient. The Court found that there was sufficient basis to believe that the manual was available to the public in the relevant time period based on a date in the manual and the declaration of the CEO.

Next, they found that the missing pages did not disqualify the reference. Only the relevant portions of a piece of prior art need be provided to an examiner, citing 37 C.F.R. §1.510 and MPEP § 704.14(a) ¶ 7.122. The Court did note that there may be instances where the absence of key pages would disqualify a reference, such as where it is believed that those pages would be necessary to understand the reference, but that circumstance did not exist here.

The Dissent Disagrees

One of the Judges strongly disagreed with the majority’s holding. In particular, she was troubled by the circumstances present with the manual and the declaration of the CEO.

First, the CEO was not a disinterested party. He was a paid expert for the third-party requester who was also in litigation against ESR. This raised credibility concerns, especially when portions of the manual in question, including the pages immediately before and after one of the pages relied on by the examiner, were missing. She was also troubled by his declaration that the manual was “a true and correct copy” when it clearly was not.

In addition, the dissent was troubled by the declarant’s failure to particularly state that the NetStalker product was sold prior to the critical date or that this particular manual was ever provided to any customers prior to the critical date.

Finally, the dissent was concerned that the manual was only a draft, because it bore a cryptic legend on its cover, there were question marks in the index, and the last ten pages of the final chapter did not exist. She believed that there was not sufficient evidence to support a finding that the manual was either a finished document or publicly available within the relevant time period.

In circumstances like these, with an incomplete reference, a biased declarant, and litigation between the patentee and third-party requester, the dissent felt that more information and testimony was required before the examiner could rely on the manual as a prior art reference.


In what is otherwise a relatively ordinary decision, some interesting issues arose. This case highlights the need for patentees to vigorously question references cited against them, especially when the circumstances suggest that the references may not be proper.

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