Appeal No. 98-1380
Application 08/786,741
that what occurred after the critical date, i.e., assembly and
testing of the machine, was merely “routine and not a major step
in the completion of an embodiment of the invention.” Unlike
Pfaff, it appears to us that here Bradbury sold a concept of an
invention. Although Bradbury was filling a specific purchase
order, the order was for a machine yet to be designed.
In Robotic Vision Sys., the court states (112 F.3d
1167-68, 42 USPQ2d 1623-24):
An offer of sale, to be a bar within the
meaning of section 102(b), must be of an
invention that is substantially complete
at the time of the offer. See Micro Chem.,
103 F.3d at 1545, 41 USPQ2d at 1243. If mere
discussions prior to the critical date, or
even an agreement to develop and provide a
device that had not yet been invented,
developed, or completed were to be held to be
a bar to patentability, then collaboration
between inventors and customers would be
greatly impeded. Patent applications would
be required to be filed prematurely, before
an invention was completed. The on-sale bar
was not intended to prevent discussions
between potential inventor-suppliers and
customers concerning inventions not yet com-
pleted. Thus, the later completion of an
invention concerning which an alleged offer
to sell had been made earlier does not relate
back to the date of that offer.
This language is relevant here. Bradbury agreed to develop and
provide MBCI with a machine which was not yet in existence.
Whether it had been conceived at the time of the sale (purchase
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