Appeal No. 1999-1002
Application No. 08/672,493
We refer to the appellants’ brief and the examiner’s
answer for a complete exposition of the opposing viewpoints
expressed by the appellants and the examiner concerning the
above-noted rejections.
OPINION
For the reasons that follow, we cannot sustain the
rejections before us on this appeal.
I. PUBLIC USE REJECTION UNDER 35 U.S.C. § 102(b)
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). Thus, the examiner bears the burden to establish
that the claimed invention was in public use more than one
year prior to the application filing date.
It has long been held that
"Public use" of a claimed invention under section
102(b) has been defined as any use of that invention
by a person other than the inventor who is under no
limitation, restriction or obligation of secrecy to
the inventor . . . . Such use, however, has been
held not to be a statutory bar to patentability if
the use was primarily for bona fide experimental
purposes
[citations omitted].
In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir.
1983).
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