Appeal No. 1999-0347 Page 11
Application No. 08/804,635
states that the appellant's object is "a transfer of part or
all of my interest in this invention ... to the Government on
a basis to be negotiated after the evaluation [of the
invention] is completed." In our opinion, the Honigsbaum
letter does not place the invention on sale within the meaning
of 35 U.S.C. § 102(b). An assignment or sale of the rights in
the invention and potential patent rights is not a sale of
"the invention" within the meaning of 35 U.S.C. § 102(b).
Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1266,
229 USPQ 805, 809 (Fed. Cir. 1986), cert. denied, 479 U.S.
1030 (1987). At best, the Honigsbaum letter is an offer for
sale of rights in the invention and potential patent rights
and thus does not trigger the on sale bar.6
6We have considered the Supreme Court decision in Pfaff
v. Wells Electronics., Inc., 523 U.S. , 142 L. Ed. 2d 261, 119
S.Ct. 304, 48 USPQ2d 1641 (1998) and the article entitled The
On-sale Bar after Pfaff v. Wells Electronics: Toward a Bright-
Line Rule, by Isabelle R. McAndrews, published in the Journal
of Patent and Trademark Office Society, March 1999, Volume 81,
No. 3, pages 155-80, especially pages 165-168. However, we do
not consider the Pfaff decision to have altered the principle
noted above set forth in Moleculon.
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