← all examsApril 2002 · Afternoon Session
UNITED STATES PATENT AND TRADEMARK OFFICEREGISTRATION EXAMINATIONAPRIL 2002AFTERNOON SESSION
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Mr. Block, the inventor, files an application with the USPTO on January 2, 2001 containing a single claim for his invention: a new bouncing ball called "O." As part of his duty of disclosure, he also files a copy of a written agreement that he and Mrs. Cone signed on January 2, 1998. The agreement states, in its entirety, that "Mr. Block will transfer my new bouncing ball 'O' to Mrs. Cone for experimental uses only to perfect the ball's bounce. Mr. Block retains full control over the new bouncing ball 'O.'" The primary examiner has no evidence that the ball was ever actually delivered to Cone. On June 2, 2001, Block receives an Office action dated June 4, 2001 from the primary examiner. The examiner has rejected Block's claim only under 35 U.S.C. § 102(b). The examiner explains in the Office action that "the 1998 written agreement signed by Block and Cone proves that the new bouncing ball 'O' was in public use more than one year prior to the January 2, 2001 filing date of the application." Block believes he is entitled to a patent for his new bouncing ball "O." How should Block respond to the rejection of his claim?