Appeal No. 1999-1002
Application No. 08/672,493
circumstances of the use, which show the amount of control the
inventor retained over the invention. See Moleculon Research
v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809 (Fed.
Cir. 1986), cert. denied, 479 U.S. 1030 (1987). In addition
to the “general understanding of the confidential nature of
the testing”, the circumstances of the testing indicate that
the inventors maintained control over the invention. The
examiner is basing his rejection on speculation that
confidentiality “may” have been compromised. Absent any
explanation or evidence, the examiner has failed to fulfill
his initial burden of proving a case of public use more than
one year prior to the application filing date.
The circumstances of the experimentation indicate that
the experimentation was under the control of the inventors.
The field test sites were secure from the public, allowing
access only to field test facility users and Xerox
technicians. The users and technicians were under obligation
to report field test rolls performance to the inventors. The
inventors conducted on site inspection of the experimental
rolls every six weeks. The inventor made provisions available
to return the test rolls after the experimentation was
concluded and a number of rolls were to be returned to Xerox.
17
Page: Previous 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Next
Last modified: November 3, 2007