In re Cronyn

Marshall Cronyn (plaintiff), a chemistry professor at Reed College, filed a patent application for a chemical compound that was potentially useful in treating cancer. An examiner for the United States Patent and Trademark Office rejected the application under 35 U.S.C. § 102. The examiner concluded that three theses by undergraduate students at Reed College had anticipated the invention for which the patent was sought, thus preventing the compound from meeting the novelty requirement for patentability. Cronyn appealed to the Patent and Trademark Office’s Board of Patent Appeals and Interferences (board) (defendant), arguing that the theses did not constitute printed publications and thus did not prevent patentability. He explained that the theses required from seniors at Reed College were purely for educational purposes, did not require original research or scholarship, and were not intended for publication. A copy of each thesis was filed in the college’s main library and the library for the relevant academic department. These libraries had theses listed on individual cards showing a student’s name and a thesis’s title. Although the cards were organized alphabetically by author, they were not generally indexed or catalogued in a conventional way. The three theses cited by the examiner were not published in any professional journals or presented in any professional settings. The only publicly accessible copies were in the college’s main library and the chemistry department’s library. The main library had approximately 6,000 cards and the chemistry department’s library had about 450 cards. Despite these facts, the board concluded that because the theses were publicly accessible to persons in the relevant field, they constituted printed publications. The board therefore affirmed the examiner’s rejection of Cronyn’s patent application. Cronyn appealed.