Appeal No. 2004-0575
Application 09/206,005
PRIOR USE UNDER 35 U.S.C. § 102(b)
The next rejection for our review is that of claims 1
through 3, 5 and 12 under 35 U.S.C. 102(b) based on a “public
use” of the invention more than one year prior to the effective
filing date of the present application, i.e., prior to the
critical date of November 17, 1994. In this instance, the
examiner contends that the transfer of 10-12 prototype units to
Ford on or about October 12, 1994, prior to the critical date,
without an existing confidentiality agreement, and without such
units themselves being marked confidential, constitutes a “public
use” of the invention at the time such prototypes were received
by engineers at Ford. The examiner appears to base this
conclusion on speculation and conjecture that Ford engineers took
the prototypes and “shopped suppliers” (final rejection, page 6)
so as to obtain the lowest possible price, and also disclosed the
prototypes to third party “testing subcontractors” for
evaluation.
2(...continued)
attorney must conduct meaningful inquiries when the surrounding
factual circumstances would cause a reasonable attorney to
understand that relevant and questionable material information
should be assessed.
14
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