Appeal No. 1997-0616
Application No. 08/318,205
one of the oil company's plants or whether an alternative system
should be installed. (Appellant's statement of May 24, 1993,
page 1.) In response to the appellant's offer, the oil company
issued a purchase order for the offeror to "'provide process
engineering services and assist buyer's...project engineer to
investigate alternatives and recommend solution for
VOC...emission control system...'" (Id.) It is clear,
therefore, that the sale or the offer to sell did not involve an
embodiment of the invention as required under § 102(b).
Since the first condition is not met, we need not discuss
whether the second condition ("ready for patenting") is
satisfied.
As to the examiner's allegation that the invention was in
"public use" before the critical date, we note that "'[p]ublic
use' of a claimed invention under section 102(b) has been
defined as any use of that invention by a person other than the
inventor who is under no limitation, restriction or obligation
of secrecy to the inventor." In re Smith, 714 F.2d 1127, 1134,
218 USPQ 976, 983 (Fed. Cir. 1983) (citing Egbert v. Lippmann,
104 U.S. 333, 336 (1881)).
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007