Appeal No. 2004-0575
Application 09/206,005
Looking at the test set forth in Pfaff v. Wells Electronics
Inc., 119 S. Ct. 304, 311-12, 48 USPQ2d 1641, 1646-47, (U.S.
1998), we note that the on-sale bar under 35 U.S.C. § 102(b)
applies when two conditions are satisfied before the critical
date, i.e., the product must be the subject of a commercial offer
for sale and the invention must be ready for patenting. On page
6 of the brief, appellant indicates that he “does not dispute
that the invention was ready for patenting before the November
17, 1994 critical date,” apparently based on Mr Kargula’s formal
drawing attached as Exhibit C of the § 132 declaration (drawing
EXP-1964-MS), which essentially shows all details of the
transmission cooler-bypass unit in the exact same manner as
Figure 1 of the present application. However, appellant does
dispute that the transfer of 10 or 12 cooler-bypass units for
$7000 to Ford constitutes a commercial offer for sale.
According to appellant,
Contrary to the Examiner’s assertion, the materials in
the Spiegel declaration are not consistent with a sale
(p.4). The Spiegel declaration and the exhibits clearly
show that no contractual offer was in place, as required by
Group One, Ltd. v. Hallmark Cards, 254 F.3d 1041 (Fed. Cri.
2001). Group One and Pfaff both specifically require that
the offer must meet the level of an offer for sale in the
contract sense, one that would be understood as such in the
commercial community. Group one, 254 F.3d at 1046. If the
offer cannot be made into a binding contract by simple
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