Appeal No. 1999-1002
Application No. 08/672,493
of Xerox had and still possibly have access to the rolls.
Once again the examiner has failed to fulfill his burden of
proof. The examiner has not produced any evidence to support
that the experimental rolls were disclosed to the public.
Instead the examiner relies on broad speculation as to what
“may” or “could” have happened. Such speculation does not
take the place of evidence. In addition, if the public had
obtained the claimed rolls, such possession would not disclose
the here claimed method particularly since these rolls were
identical to the pre-existing commercial rolls.
The examiner also argues that, because there was no
written confidentiality agreement between the appellants and
the users of the test facility, there was a “public use”
within the prohibitions of §102(b). While the examiner
recognizes that there was a “general understanding at the test
sites of the confidential nature of the experimentation”, it
is the examiner’s position that there is no evidence to
support that the information was indeed kept confidential.
See Answer, page 9.
The presence or absence of a confidentiality agreement is
not itself determinative of the public use issue, but is one
factor to be considered along with the time, place, and
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