Appeal No. 1997-2374
Application No. 08/064,352
were signed, which were indeed signed more than one year prior to the filing date of the
application, as the dates on which the materials were used. However, the agreements
state that the research materials will be furnished to Townsend, Hoffman and/or Hays,
not that the research materials were in fact furnished to them, that they used the
materials, and on the date the agreements were signed. Whether Townsend, Hoffman
and/or Hays actually received the indicated research materials and then used them
more than one year prior to the filing date of the application is a matter of speculation.
Even if we were to assume, as the examiner has, that Townsend, Hoffman
and/or Hays indeed received and used the indicated research materials more than one
year prior to the filing date of the application, to establish a prima facie case of public
use, examiner still has the burden of showing that the use of the indicated research
materials was a public use.
Issues arising under the public use bar of section 102(b) are determined by
considering the totality of the circumstances. In re Brigance, 792 F.2d 1103, 1107, 229
USPQ 988, 991 (Fed. Cir. 1986). “A decision on whether there has been a 'public use'
can only be made upon consideration of the entire surrounding circumstances," TP
Laboratories, Inc. v. Professional Positioners, Inc. et al., 724 F.2d 965, 971, 220 USPQ
577, 582 (Fed. Cir. 1984). However, “’[t]he use of an invention by the inventor himself,
or of any other person under his direction, by way of experiment, and in order to bring
the invention to perfection, has never been regarded as such a use’,” TP Laboratories,
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