Appeal No. 1997-0616
Application No. 08/318,205
In the case before us, we determine that the first
condition is not satisfied. Our reasons follow.
We start with the statute. 35 U.S.C. § 102(b) (2001)
states:
(b) the invention was patented or described in a
printed publication in this or a foreign country or in
public use or on sale more than one year prior to the
date of the application for patent in the United
States...[Underscoring added.]
Thus, the plain text of section 102(b) provides that it is the
"invention" which must be "in public use or on sale more than
one year prior to the date of the application for patent..."
Cf. Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1217, 48
USPQ2d 1010, 1019 (Fed. Cir. 1998) (approving the district
court's determination that the "on-sale bar" does not apply
where the offer did not involve a sale or an offer to sell the
invention itself).2
Applying this principle, we determine that the first
condition of the "on-sale bar" test in Pfaff is not met in this
case. Specifically, the examiner has relied on the appellant's
statements regarding an offer to undertake a feasibility study
on whether an embodiment of the invention should be installed in
2 See also Donald S. Chisum, Chisum on Patents § 6.02[6],
at 6-67 (2000).
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