Appeal No. 2004-0575
Application 09/206,005
With respect to appellant’s characterization on page 8 of
the brief regarding Weatherchem v. Clark, 49 USPQ2d 1001 (Fed.
Cir. 1998) requiring commercially reasonable quantities of units
to be involved in a transaction before the “on sale” bar of
35 U.S.C. § 102(b) is triggered, we agree with the examiner’s
evaluation as set forth in the paragraph bridging pages 13-14 of
the answer, and find no basis in Weatherchem to conclude that
“commercially reasonable quantities” of units must be involved in
a transaction before that transaction can trigger an “on sale”
bar under 35 U.S.C. § 102(b).
Based on the foregoing, we will sustain the examiner’s
rejection of claims 1 through 3, 5 and 12 under 35 U.S.C.
§ 102(b) based on prior sale.2
2 Regarding an attorney’s duty of reasonable inquiry and
investigation, we simply point to the statements and reasoning of
the Court in Brasseler v. Stryker Sales Corp., 267 F.3d 1370,
1382-85, 60 USPQ2d 1482, 1489-91 (Fed. Cir. 2001), wherein the
Court noted that an attorney has no duty to investigate unless
he/she is presented with sufficient information to suggest the
existence of specific information the materiality of which may be
ascertained with reasonable inquiry. Thus, there is no need for
an attorney to pursue a fishing expedition to obtain information,
unless there is reason to question the accuracy or completeness
of information at hand and counsel is on notice of the likelihood
that specific, relevant, material information exists and should
be disclosed. In the final analysis, the Court indicates that an
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