Appeal No. 2002-1644 Page 4
Application No. 08/602,498
USPQ2d at 1646-47. As the court explained (id. 535 U.S. at 57, 48 USPQ2d at
1647), the second part of the test may be satisfied in at least two ways: (1) by
proof of reduction to practice before the critical date2; or by proof that prior to the
critical date the inventor had prepared drawings or other descriptions of the
invention that were sufficiently specific to enable a person skilled in the art to
practice the invention.
According to appellants (Brief, page 5, emphasis removed), the sale of
DX-206 fails to meet the first part of the Pfaff test because “DX-206 was not the
subject of commercial sales prior to the critical date … [instead the sales] were
primarily for an experimental purpose.” In addition, appellants argue (id.) that the
second part of the Pfaff test does not apply in this case because “the claimed
invention was not ‘ready for patenting’ … when the above-noted sales were
made, or at any time prior to the critical date.”
With reference to the Gardner and Dee Declarations, appellants’ argue
(Brief, page 6), “the sales by Babson[3] of DX-206 to Dr. Gardner and Mr.
Anderson prior to February 20, 1995[4], were for experimental purposes, as were
the sales by Dr. Gardner and Mr. Anderson of DX-206 to certain of Dr. Gardner’s
veterinary clients.” According to the Dee Declaration (paragraphs 2-6) the DX-
206 formulation was under development up until “December 6-7, 1994.” As Dee
2 The instant application was filed on February 20, 1996, accordingly, the critical date for purposes
of the “on-sale” bar is one year prior to the filing date, specifically February 20, 1995.
3 The instant application “is assigned to Babson Bros. Co. (Babson), which on March 9, 1999 was
acquired by Gea AK Aktiengesellschaft of Germany and is now known as Westfalia-Surge, Inc.”
Brief, page 1.
4 Accordingly, the sales were made before the critical date “one year prior to the actual filing date
of the instant application.”
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