Appeal No. 2000-009
Application 08/742,426
1565-66, 31 USPQ2d at 1821; see also 32 F.3d at 1507-71, 31 USPQ2d at 1824-25 (Plager, J.,
joined by Cowen, J., concurring).
Indeed, the evidence relevant to whether a claimed invention may have been on-sale
before the critical date is ordinarily placed in the record by an applicant, either on his or her own
volition or pursuant to a request for information by the examiner. See generally, MPEP
§ 706.02(c), “Rejection Under 35 U.S.C. 102(a) or (b); Knowledge by Others or Public Use or
Sale” (7th ed., Rev. 1, Feb. 2000; 700-12). Thus, the development of the record in a patent
application with respect to whether the claimed invention was in public use or on-sale within the
meaning of § 102(b) before the critical date is generally to a large extent the responsibility of
appellants. Here, on the basis of the evidence in the Ford letter, the examiner has not inquired
and appellants have not stated whether the present assignee has investigated the auto glass that
St. Gobain and its subsidiaries offered for sale more than one year prior to the effective filing
date of the claimed composition and glass in the present application.
Second, the evidence in the Ford letter places a St Gobain glass in the possession of Ford
as of “Jan 90,” which date is within a year of the filing date of the great grandparent ‘915
application. We fail to find in the record that the examiner has established the effective filing
date of the claimed composition and glass encompassed by the appealed claims. We note that
appellants have not claimed the benefit of even the immediate parent application under 35 U.S.C.
§ 120, even though we find that the claims of each of the ‘886, ‘872 and ‘929 patents appear to
adjoin, encompass or fall within the appealed claims.7
And, third, the relevance of the evidence with respect to the sample “SVG2” in
Attachments C, D and D-1 to the claimed invention encompassed by the appealed claims is
apparent from the following. With respect to the amount of cerium oxide, 517 ppm amounts to
about 0.05 weight percent of the glass composition. We agree with the examiner that this
amount of cerium oxide can be contained by the claimed glass compositions encompassed by the
7 There is no indication in the record that the examiner considered the issues of double patenting
that are apparent in comparing the appealed claims with those of the patents in the lineage of this
application. Thus, it is suggested that these issues be considered by the examiner upon further
consideration of the appealed claims. To the extent that consideration of the issues of double
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