Appeal No. 1999-1002
Application No. 08/672,493
claims for both the method of producing the fuser rolls and to
the fuser rolls themselves. The examiner issued a restriction
requirement in the subject application asserting that two
independent and distinct inventions were claimed in one
application. See 35 U.S.C. § 121. In response to the
examiner’s restriction requirement, the appellants' elected
original claims 17–46 directed to a method for manufacturing
the non-elected fuser rolls. The examiner after originally
arguing that the fuser rolls and the method of producing the
fuser rolls were separate and distinct inventions, now asserts
that the use of the non-elected fuser rolls constitutes a
public use of the elected method of production.
We find a contradiction in this approach. The appellants
have stated and the examiner has not disputed that the
appealed claims are directed to a method for the manufacture
of the fuser rolls. The appellants have indicated that there
are no visual differences between the conventional fuser rolls
and the fuser rolls produced using the claimed method. In
addition, inspection of the field-tested fuser rolls in no way
teaches the steps of appellants' claimed method of producing
fuser rolls. Therefor use of the field tested fuser rolls
does not support a public use rejection of claims to the
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