Appeal No. 2000-009
Application 08/742,426
Corp., 86 F.3d 1113, 1120, 39 USPQ2d 1100, 1105 (Fed. Cir. 1996), quoting In re Smith, 714
F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).
“Whether something is ‘in public use or on sale’ within the meaning of section 102(b),
and thus properly considered prior art, is a question of law with subsidiary issues of fact.” In re
Epstein, 32 F.3d 1559, 1564, 31 USPQ2d 1817, 1820 (Fed. Cir. 1994). The activities of third
parties can establish the public use and on sale bars. Id. The standard of proof that must be met
by the examiner in making a rejection of the appealed claims under the public use and on-sale
bars of § 102(b) is a preponderance of the evidence. Id., quoting In re Caveney, 761 F.2d 671,
674, 226 USPQ 1, 3 (Fed. Cir. 1985);3 see also Manual of Patent Examining Procedure (MPEP)
§ 706, “Uniform Application of the Patentability Standards” (7th ed., Rev. 1, Feb. 2000; 700-8).
In establishing the factual foundation for a ground of rejection in an ex parte proceeding, the
PTO is “not bound by the rules of evidence that govern judicial proceedings.” Epstein, 32 F.3d
at 1565-66, 31 USPQ2d at 1821; see also Winner International Royalty Corp. v. Wang, 202 F.3d
1340, 1347, 53 USPQ2d 1580, 1585 (Fed. Cir. 2000) (“In an interference, unlike an ex parte
proceeding, the Federal Rules of Evidence apply. See 37 C.F.R. §1.671(b) (1998).”). However,
while the hearsay rules may not apply in an ex parte proceeding, testimonial and documentary
evidence ordinarily excluded by such rules is nonetheless carefully considered with respect to the
risk of inaccuracy and trustworthiness. See Epstein, 32 F.3d at 1565-66, 31 USPQ2d at 1821-22.
3 In Caveney, our reviewing court discussed the applicability of the different standards of proof
required with respect to the prosecution of patent applications before the United States Patent and
Trademark Office and invalidating a patent claim:
[A]lthough patents are entitled to a presumption of validity under 35 U.S.C. § 282, and
the party asserting patent invalidity under 35 U.S.C. § 102(b) must support the
assertion by facts constituting clear and convincing evidence, . . . patent applications
are not entitled to the procedural advantages of 35 U.S.C. § 282. From In re Etter,
[756] F.2d [852,] 225 USPQ 1 (Fed. Cir. 1984) (en banc), it is apparent that, due to
35 U.S.C. § 282, the standard of proof required to properly reject the claims of a patent
application is necessarily lower than that required to invalidate patent claims. The
three standards of proof generally recognized are proof by a preponderance of the
evidence, proof by clear and convincing evidence, and proof beyond a reasonable
doubt. . . . Because it is the only standard of proof lower than clear and convincing,
preponderance of the evidence is the standard that must be met by the PTO in making
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