Appeal No. 98-1380
Application 08/786,741
of that conception, it can be said there is
not yet any “invention” which could be placed
on sale.
In determining that there was an on-sale bar in that case, the
court noted the following (816 F.2d at 657, 2 USPQ2d at 1472):
[As of the critical date], the development of
the subject invention was far beyond a mere
conception. Much of the invention was
embodied in tangible form. The prior art
devices embodied each element of the claimed
invention, save one, and that portion was
available and had been sufficiently tested to
demonstrate to the satisfaction of the inven-
tor that the invention as ultimately claimed
would work for its intended purpose. Thus,
we conclude from the unchallenged facts with
respect to the commercial activities of UMC,
coupled with the extent to which the
invention was developed, the substantial
embodiment of the invention, the testing
which was sufficient to satisfy the inventor
that his later claimed invention would work,
and the nature of the inventor’s contribution
to the art, that the claimed invention was on
sale within the meaning of section 102(b).
We do not find the factors noted by the court in UMC,
supra, to be present in the instant case. While there is no
evidence here as to whether or not prior art devices embodied any
element of the claimed invention, it appears from Mr. Bradbury’s
declaration (S.D. ¶8) that no testing had been done. Thus,
although Mr. Bradbury does not so state, it does not appear that
it could have been demonstrated to his satisfaction that the
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