The fact that a printed publication may be incomplete (e.g., missing pages) does not automatically exclude it from being applied as prior art without a showing that the missing sections might “plausibly” teach away from the claimed invention. It is not plausible to simply assert that the missing sections may per se contain descriptions that would detract from the remaining teachings. For example, as here, it is not plausible that a manual would “tell users how they can utilize the product in a particular way, only to then tell them not to do so.”
Background / Facts: The patent on appeal here from a reexamination rejection at the PTO claims a computer security device and method for preventing unauthorized individuals from gaining access to a local computer network. The primary reference used in the rejection is the manual of a software product called NetStalker (“NetStalker” or the “Manual”). However, only a partially complete copy of the Manual survived for examination.
Issue(s): Whether the Manual still qualifies as bona fide prior art for obviousness purposes when it is missing pages, precluding it from being “considered in its entirety, i.e., as a whole, including portions that would lead away from the invention in suit.”
Holding(s): Yes. While it is true that “§ 103 does not permit a court to stitch together an obviousness finding from discrete portions of prior art references without considering the references as a whole,” the court concluded that “[this] is not what occurred here.” Moreover, the PTO’s rules as embodied in the Manual of Patent Examining Procedures (“MPEP”) contemplates partial submissions of prior art documents, instructing that it is only necessary to submit the “pertinent parts” of certain documents (e.g., non-English translations or information requested by the examiner as necessary “to properly examine or treat the matter” if “the document is a bound text or a single article over 50 pages”). “We agree that missing pages may sometimes be necessary for understanding a prior art reference. But nothing in the Manual here suggests that the missing pages were necessary to an understanding of the pertinent parts of the reference.”