These questions have to do with experimental use and 102(b) rejections. Experimental use doesn’t start the one year clock for 102(b), but using the invention in a non-experimental way (even in a stupid way) starts the one year clock for 102(b). It doesn’t matter if no one knew about the invention (e.g., corset) or could tell that the use was “public”.
Lip Gloss (Test takers report fact pattern variants for the lip gloss question.)
Kissing at Parties –
The inventor publicly used a lip gloss she invented by kissing people at parties for over a year. There was a red herring about the inventor not telling people how the lip balm worked. (There may have also been some other fact about the nature of the parties to indicate how public they were.) Answer – 102(b) bar; public use doesn’t require that the claimed invention be enabled as opposed to a publication. There was nothing to indicate that the kissing was for experimental reasons (at least not for perfecting the invention).
Gag Gift – The inventor used her product for experimentation then as a gag item before filing. Experimental use of lip gloss is not a 102(b) statutory bar; however, giving it away to your friends as a gag gift is a 102(b) bar. It was experimental use until she ended her experiment and kept using the product
Ship Bell
Ship Bell (latest variant on lip gloss/floor tile) has to do with public use/experimentation. A boat owner invented a new sea bell for his boat & gave copies to all his friends (w/out instructions).
{ 15 comments… read them below or add one }
Both the lip gloss and ship bell questions are variants of a question from a past exam involving floor tiles.
Lip Gloss (102(b)) question, where she files application more than 1 year after experimental testing began, but used lip gloss as party gag after experimenting was over for about 2 months before filing application. Is it a 102(b) disqualification?
I believe that the 102(b) bar is from when the testing Ends, rather than from when it starts. So it could be if she was using it as a gag earlier than a year before her first app.
Let me clarify that, when I say ‘Ends’, I mean when the testing stops being experimental, and when it starts just being public use.
Just got this question today in lip gloss format. It said she herself was the only one to use the lip gloss and for her own personal enjoyment which I decided did not amount to public use because of 2133.03(a)
3.There Is No Public Use If Inventor Restricted Use to Locations Where There Was a Reasonable Expectation of Privacy and the Use Was for His or Her Own Enjoyment
An inventor’s private use of the invention, for his or her own enjoyment is not a public use. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809 (Fed. Cir. 1986) (Inventor showed inventive puzzle to close friends while in his dorm room and later the president of the company at which he was working saw the puzzle on the inventor’s desk and they discussed it. Court held that the inventor retained control and thus these actions did not result in a “public use.”).
Thus Able’s claim was patentable and there was not 102(b) bar. The part of the question involving experimental use was irrelevant because the experiment’s involved an invention that was of different subject matter (vegetable lip gloss rather than fruit).
feel free to make your own calls on this one though.
I answered its a 102(b) bar. I was between the two choices.
Even though there is experimental use, more than a year has passed since she reduced the invention to practice and her friends stopped using her bad lipstick. That one year in-between is critical because she’s still wearing it around to parties and functions.
Maybe, because it was used at a party, its a 102(b) bar because there is no expectation of privacy at a party even though it was for inventors own enjoyment (see Colin’s 3/17/09 post above).
Lip stick is distinguishable from case law above becasue Public Use occured in dorm room and office whereas here, it occured at a party. Don’t take it from me, I’ve done too much partying anyhow!!
I reviewed this question on today. the correct answer is (a). it must be rejected under 102(b). Even though the invention was used for experimental use, it is public use under 102(b) if it was actually reduced to practice before more than 1 year from its filing date. Thus, Bulldozer’s comment is the most correct answer.
CWJ9357-
Are you sure the answer is correct? How do you know?
Lip gloss, ship bells, tiles and titanium baseballs suggest that the PTO is quite interested in the operational definition of public use and/or display. The passage below from MPEP 2133.03(a)/II/3 suggests to me that the critical issue is control.
3.There Is No Public Use If Inventor Restricted Use to Locations Where There Was a Reasonable Expectation of Privacy and the Use Was for His or Her Own Enjoyment
An inventor’s private use of the invention, for his or her own enjoyment is not a public use. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809 (Fed. Cir. 1986) (Inventor showed inventive puzzle to close friends while in his dorm room and later the president of the company at which he was working saw the puzzle on the inventor’s desk and they discussed it. Court held that the inventor retained control and thus these actions did not result in a “public use.”).
I’m floating the view that controlled exposure is not public exposure.
Art Williams
Just had this question on my 9/8/09 exam, the question I had not only described her experimental phase very specifically with dates and a nondisclosure with her small group of friends but then goes on to say she finishes her experimentation, then goes to partys and kisses people with it in January, February and March then files some time in February or March of the following year. It says she meticulously provides all this documentation to the examiner. The problem pretty clearly lies not with the experimental phase, since that has a nondisclosure and a limited group and results in her perfecting the fruitiness of her lip balm, but with her public use kissing people at parties more than one year before filing. There is no mention of the parties having a “reasonable expectation of privacy” or being restricted access in any way, so I chose my answer based on the 102(b) bar for public use.
Just had this Q on the 9-9-09 exam (I passed) and I agree with Greg, the previous poster. The fact pattern indicates that the inventor had already perfected the lip gloss, then began using it at parties as a gag. The inventor files more than one year later, that is, more than more year after she began using it a parties as a gag. I picked she was barred under 102(b) as well.
Thanks to everyone who contributes to this website.
Greg and Fred,
The following segment of MPEP 2133.03(a)/II/3 seems unambiguous in requiring both privacy and personal enjoyment.
There Was a Reasonable Expectation of Privacy and the Use Was for His or Her Own Enjoyment
An inventor’s private use of the invention, for his or her own enjoyment is not a public use.
I understand you to say that the fact pattern is explicit in saying that the use was for her own enjoyment (“gag”). I also understand both of you to agree that the “parties” are not “private”. Right?
Your analysis comes down to the difference in privacy between “close friends in a dorm room” and “parties”. Right?
Thanks, Art Williams
Art Williams: I agree with Gred and Fred on this one that the answer is 102(b) rejection.
Remember, a use can initially be experimental (no public use) for the inventor’s own personal enjoyment. HOWEVER, once the experimental use (i.e. the personal enjoyment) is over, which happens when reduction to practice occurs, and if the invention continues to be in the public use thereafter (such as at a party), then 102(b) clock begins to tick. Based on everyone’s comments, it seems that the inventor eventually reduced the invention to practice, THEN started kissing people at the party. At this point, experimental use is over and public use begins. The inventor should have filed within 1 yr of her kissing people at the party to avoid the 102(b) bar.
I had this on 6/7. The fact pattern made it clear that she finished her testing in a given month (I think January), but then continued to make a public use of it (gags at parties, etc) until something like the following March. They tried to hint at the fact that it was a concealed use since it was only on her lips. This is still a public use though, and was a bar to patent. Same idea as the floor wax question from 4.02.32a.