Appeal No. 1999-1002
Application No. 08/672,493
(I) disclosure by an inventor to a user regarding
what the inventor considers as unsatisfactory
operation of the invention (In re Dybel, 524 F.2d
1393, 1401, 187 USPQ 593, 599 (CCPA 1975));
(J) effort on the part of an inventor to retrieve
any experimental samples at the end of an
experimental period (Monon, 239 F.3d at 1258, 57
USPQ2d at 1703; Omark Indus., Inc. v. Carlton Co.,
458 F.Supp. 449, 454, 201 USPQ 825, 830 (D. Ore.
1978)); and
(K) a doctor-patient relationship where the
inventor/doctor conducted the experimentation (TP
Labs., Inc. v. Professional Positioners, Inc., 724
F.2d 965, 971, 220 USPQ 577, 582 (Fed. Cir.), cert.
denied, 469 U.S. 826 (1984).
The examiner must determine whether the scope and
length of the activity were reasonable in terms of
the experimental purpose intended by the applicant
and the nature of the subject matter involved. No
one of, or particular combination of, factors (A)
through (K) is necessarily determinative of this
purpose.
MPEP § 2133.03(e)(4) (7th Ed., Rev. 1, Feb. 2000).
We note that the claimed subject matter of the
application is a method for producing coated fuser rollers.
The Examiner’s rejection is based on the public use of an
article, the coated fuser rolls, that are the end product of
the claimed method. Apparently, the examiner believes that a
public use of the fuser rolls is a public use of the process
to make the fuser rolls within the prohibitions of §102(b).
The appellants’ originally filed application contained
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