Appeal No. 2001-2421
Application No. 09/092,577
OPINION
With respect to the 35 U.S.C. § 102 rejection of claims 1-
17, Appellants argue that the agreement between the assignee and
the inventor relates to a general transfer of technology,
including some disclosed in this application, and “cannot
properly be construed to constitute a commercial sale of a
complete invention” (brief, page 2 and reply brief, page 1).
Appellants point out that agreements made by employees that any
invention made within their scope of employment are property of
the employer have never constituted a statutory bar under Section
102 (brief, page 3). In response, the Examiner merely points out
that the document labeled “Bill of Sale” does not appear to be an
employment agreement and meets the time frame under Section
102(b) (answer, page 5).
Upon a review of the record before us, we find that the
agreement which the Examiner regards as a “sale contract” and a
statutory bar, in effect, is an agreement between an employee and
an employer for transferring the right to an invention made
within the scope of that employee’s employment. Although the
agreement is labeled “Bill of Sale,”2 its content does not
reflect a commercial sale but, in fact, indicates that the
2 Attached as Exhibit A to the declaration signed by the assignee
(Paper No. 7, filed November 9, 1998).
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