Appeal No. 1999-1002
Application No. 08/672,493
The above circumstances indicate the experimentation was under
the control of the inventors.
When considering the factors discussed above, we find
that the evidence supports appellants’ position that the
activities constituting public use are within the experimental
use exception.
For the above-stated reasons, we reverse the rejection
under 35 U.S.C. § 102(b) based on public use.
II. ON SALE REJECTION UNDER 35 U.S.C. § 102(b)
Like the rejection based on public use, the burden is
also on the examiner to establish that the claimed invention
was on sale more than one year prior to the application filing
date. A sale is a contract between parties wherein the
seller agrees “to give and to pass rights of property” in
return for the buyer’s payment or promise “to pay the seller
for the things bought or sold.” In re Caveney, 761 F.2d 671,
676, 226 USPQ 1, 4 (Fed. Cir. 1985). If the sale was for the
commercial exploitation of the invention, it is “on sale”
within the meaning of 35 U.S.C. § 102(b). Dybel, 524 F.2d at
1401, 187 USPQ at 599 (“Although selling the devices for a
profit would have demonstrated the purpose of commercial
exploitation, the fact that appellant realized no profit from
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