Appeal No. 1999-1002
Application No. 08/672,493
the sales does not demonstrate the contrary.”). “The usual way
[to support a conclusion that the invention was not placed on
sale within the statute’s meaning prior to the critical date]
is to show that the primary purpose underlying the offer to
sale was experimental and not commercial.” In re Hamilton,
882 F.2d 1576, 1580, 11 USPQ2d 1890, 1893 (Fed. Cir. 1989).
As indicated previously, the fuser rolls were field
tested in copier machines that were leased by the field test
facilities from Xerox. Xerox had service agreements with the
field test facilities. The service agreements provided for
copier machine maintenance and roll replacement. The field
test facilities paid Xerox for the service agreements and all
service agreements were in effect before the experimentation
started. Xerox did not sell the rolls directly to any of the
field test facilities. The cost of the experimental fuser
rolls was greater than that of the conventional rolls due to
their low volume of production.
The examiner argues that the activities described above
constitute an “on sale” bar. It is the examiner’s position
that the “claimed products were sold or leased to the public,
i.e., revenue was received from customers using the machines
equipped with the claimed rollers.” Examiner's Answer, page
19
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