Appeal No. 1999-0194
Application No. 08/436,626
and N22 through N24 make clear that the tests in question were
for the purpose of investigating the effect that misalignment
of prestress clamping forces would have on the connected
beams.6 In that misalignment and prestress clamping are
unclaimed features of appellant’s invention, the experimental
use justification for avoiding a statutory bar does not apply
to these experiments. See RCA Corp. v. Data Gen. Corp., 887
F.2d 1056, 1061-62, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989); In
re Smith, 714 F.2d 1127, 1135-36, 218 USPQ 976, 984 (Fed. Cir.
1983); and In re Theis, 610 F.2d 786, 793, 204 USPQ 188, 193-
94 (CCPA 1979).
We do not find any objective evidence in the record to
support the statement in N10 and N17 that a “joint venture,”
either formal or informal, existed between appellant’s
company, the bridge contractors, and PennDoT regarding
development and evaluation of the claimed invention. For this
reason, it is not seen how the supervision and control
6See, for example, the letter dated November 8, 1993 from
inventor Nagle to Horst Wels of PennDoT, attached as an
exhibit to the Bonstedt declaration.
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