Appeal No. 2002-1644 Page 3
Application No. 08/602,498
statements made in the Brief and the Declarations of Gardner (Tab 2); Dee (Tab
3); Meisters (Tab 6); and Wilkins (Tab 7).
GROUNDS OF REJECTION
Claims 14-16 and 21-24 stand rejected under 35 U.S.C. § 102(b) in view
of the commercial sale of DX-206.
Claims 14-16 and 21-24 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103 as being
unpatentable over Kabara.
We affirm the rejection of claims 21-24 under 35 U.S.C. § 103 as being
unpatentable over Kabara. We reverse all other grounds of rejection.
DISCUSSION
THE REJECTIONS UNDER 35 U.S.C. § 102:
Commercial Sale:
According to the examiner (Final Rejection, page 2),
[t]he record in this case shows DX-206 is the composition of the
instant invention to be applied as a teat dip to dairy cows, for the
purpose of reducing, ameliorating and preventing mastitis-the
instant method calls for applying to the teats; the step immediately
envisioned by one of ordinary skill in dairy husbandry. This product
was in fact sold to Dr. Gardener and Mr. Anderson, thus
constituting a commercial sale.
In response, appellants rely upon Pfaff v. Wells Elecs., Inc., 535 U.S. 55,
48 USPQ2d 1641 (1998), and argue that the sale of DX-206 fails to meet either
part of the two-part test set forth in Pfaff. Brief, page 5. According to Pfaff the
“on-sale” bar applies if (1) the product is the subject of a commercial offer for
sale, and (2) the invention is ready for patenting. Id. 535 U.S. at 57, 48
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