Appeal No. 95-5032
Application 08/189,276
presumption has not been overcome by appellants’ bare denial.
Part of the problem is that it is not clear what is meant by appellants’ statement now that Figures 3
and 4 are not prior art. Appellants could mean that Figures 3 and 4 are not prior art under any section
of 35 U.S.C. § 102 which assertion would not be sufficient to prove that they are not prior art against
appellants in this case. It has been held that certain prior art may be prior art to one inventive entity, but
not to the public in general. See, for example, In re Fout, 675 F.2d 297, 300-301, 213 USPQ 532,
535 (CCPA 1982). Thus, in order to make the legal determination that Figures 3 and 4 are not prior
art with respect to appellants, one needs to know exactly where these figures came from and how
appellants became aware of these figures. Appellants are in a unique position to explain how they
became aware of the circuit of Figure 3 and as to whether the circuit of Figure 3 is prior art with
respect to them.
Fout also stands for the proposition that an appellants’ invention should be judged on obviousness
against their actual contribution to the art. Thus, if Figures 3 and 4 do not represent the work of
appellants, then it would be proper to conclude that these figures form no part of appellants’ invention
and are prior art with respect to appellants. It is noteworthy that the device of Figure 3 has the kind of
problems which appellants’ invention is designed to correct [SUMMARY OF THE INVENTION,
supra]. This discussion of the invention in appellants’ specification also raises the presumption that
Figure 3 is not the invention, but rather, the invention was designed to correct the problems created by
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