Appeal No. 1995-4400
Application 07/694,302
that '90 MTA "does not indicate public use [appellants' emphasis] of the claimed invention.
Thus, the material transfer agreement to Dr. Risser and the transfer itself are not properly
deemed prior art and can neither anticipate nor make obvious the claimed subject matter."
Brief, p. 7. We agree.
The burden resides with the examiner to establish a prima facie case of anticipation
based on the facts in this case. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). The burden is on the examiner to establish that '90 MTA demonstrates
that the claimed invention - hybridoma cell line 720 - was in public not experimental5 use.
That the examiner has not done.
Examiner merely states (Examiner’s Answer, p. 5) that '90 MTA "indicates that the
invention was in public use." In our view, that is not enough to satisfy the burden. Examiner
has not made the necessary fact-finding to reach that conclusion. In fact, a plain reading of
the reference does not support examiner's position. In paragraph 3 of the Agreement, it
states that "This Research material will not be used for commercial purposes…." In
(b) the invention was ... in public use or on sale in this country, more than one year prior to the date of the
application for patent in the United States, ... .
5 "'The experimental use doctrine operates in the inventor's favor to allow the inventor to refine his invention
or to assess its value relative to the time and expense of prosecuting a patent application. If it is not the
inventor or someone under his control or 'surveillance' who does these things, there appears to us no reason
why he should be entitled to rely upon them to avoid the statute.' See In re Hamilton, 882 F.2d 1576, 1581,
11 USPQ2d 1890, 1894 (Fed. Cir. 1989) (discussing experimental use in the context of the on-sale bar)
(emphasis in original). Providing Cullis, the inventor, with the benefit of Suaudeau's testing is thus contrary
to this policy, as Suaudeau was not using or testing the invention for Cullis. Id. Accordingly, we hold that
public testing before the critical date by a third party for his own unique purposes of an invention previously
reduced to practice and obtained from someone other than the patentee, when such testing is independent
of and not controlled by the patentee, is an invalidating public use [our emphasis], not an experimental use."
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