Appeal No. 1999-1002
Application No. 08/672,493
5. The revenue to which the examiner refers was generated
from service agreements. According to the examiner, the
service agreements included replacement of the rolls as part
of the maintenance of the copier and paying for the
maintenance is equivalent to paying for the rolls. The
examiner argues that “revenue was received” one year prior to
the application date and, therefore, it constitutes an on sale
§102(b) bar. See Examiner’s Answer, page 11.
Similar to the examiner’s rejection based on public use,
the examiner’s on sale § 102(b) rejection fails to address
that the appealed claims relate to a method. The examiner’s
position is that the rollers are the “claimed products [which]
were sold or leased to the public”. See Examiner's Answer,
page 5. To make a prima facie case for rejection an examiner,
at minimum, must explain his position in a sufficient manner
that allows an applicant to respond to the pertinent issues.
Although it may be possible that a sale of an unclaimed
product might support a rejection of a claimed method of
production of that product (Cf., Caveney, 761 F.2d at 675-76,
226 USPQ at 3-4), this issue has not been specifically
addressed by the examiner on this appeal. The examiner has
failed to make a distinction between the unclaimed fuser rolls
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