Appeal No. 98-1380
Application 08/786,741
application of the on-sale bar. Pfaff v. Wells Elecs., Inc.,
124 F.3d 1429, 1433, 43 USPQ2d 1928, 1931 (Fed. Cir. 1997).4
In holding that there was an on-sale bar, the examiner
cites UMC Elecs. Co. v. United States, 816 F.2d 647, 2 USPQ2d
1465 (Fed. Cir. 1987), cert. denied, 484 U.S. 1025 (1988), and
KeyStone Retaining Wall Sys. Inc. v. Westrock Inc., 997 F.2d
1444, 27 USPQ2d 1297 (Fed. Cir. 1993). These cases, like Pfaff,
hold that a reduction to practice of the claimed invention is not
an absolute requirement of the on-sale bar. UMC, 816 F.2d at
656, 2 USPQ2d at 1471; KeyStone, 997 F.2d at 1452, 27 USPQ2d at
1303. In UMC (as in Pfaff), it was determined that there was
4On March 9, 1998, the Supreme Court granted certiorari in
this case (118 S.Ct. 1183), limited to the following Question 1:
In view of the longstanding statutory definition that
the one-year grace period to an “on sale” bar can start
to run only after an invention is fully completed,
should the Pfaff patent have been held invalid under
35 U.S.C. 102(b) when Mr. Pfaff’s invention was
admittedly not “fully completed” more than one year
before he filed his patent application?
See Mueller, Conception, Testing, Reduction to Practice: When is
it Really on Sale?, 80 J.PTO Socy. 305, 316 (May 1998).
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007