Appeal No. 1999-1002
Application No. 08/672,493
employees and the restricted access of the test facilities are
indicative of conduct within the experimental use exception.
Finally, the appellants argue that their efforts to
retrieve the test samples at the conclusion of experimentation
indicate that their conduct is within the experimental use
exception. Effort on the part of an inventor to retrieve any
experimental samples at the end of an experimental period is a
factor that indicates conduct within the experimental use
exception. Monon, 239 F.3d at 1258, 57 USPQ2d at 1703; Omark,
458 F.Supp. at 454, 201 USPQ at 830. Each test site
technician received a field test manual that included
directions on how to return the experimental rolls to Xerox
after the field-testing had been completed. In addition, the
manuals also included pre-paid and pre-addressed mailing
envelopes that were to be used to return the experimental
rolls. Using the above directions and mailing envelopes Xerox
technicians returned 159 test rollers at the conclusion of
their field-testing. The efforts to retrieve the experimental
rolls support a conclusion that the appellants’ conduct was
within the experimental use exception.
The examiner’s position on this issue is that the fact
that not every roll was returned suggests that people outside
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