2133
2133 Pre AIA 35 U.S.C. 102(b)
FOSTER
An applicant cannot “antedate” a statutory bar. In re Foster, 343 F.2d 980 (CCPA 1965), overruling An applicant cannot “antedate” a statutory bar. In re Palmquist, 319 F.2d 547 (CCPA 1963) (the overruled Palmquist decision arguably supports 3M’s position on appeal).
2133.01 Rejections of Continuation-In-Part (CIP) Applications
PAPERLESS
see also, Paperless Accounting, Inc. v. Bay Area Rapid Transit System, 804 F.2d 659, 663 (Fed. Cir. 1986) (rejection in final rejection not commented on in examiner’s answer not an adverse decision considered by Board).
2133.02 Rejections Based on Publications and Patents
APPLICANT'S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC BEFORE THE GRACE PERIOD MAY BE USED IN A 35 U.S.C. 102(b) REJECTION
A 35 U.S.C. 102(b) REJECTION CREATES A STATUTORY BAR TO PATENTABILITY OF THE REJECTED CLAIMS
2133.03 Rejections Based on "Public Use" or "On Sale" [R-5]
See also LaBounty Mfg., Inc. v. U.S. Int’l Trade Com’n, 958 F.2d 1066, 1075 (Fed. Cir. 1992) (in quoting with approval from Dwight & Lloyd Sintering Co. v. Greenawalt, 27 F.2d 823, 828 (2d Cir. 1928)):
The use for which the [anticipatory] apparatus was intended is irrelevant, if it could be employed without change for the purposes of the patent; the statute authorizes the patenting of machines, not of their uses.
POLICY CONSIDERATIONS
2133.03(a) "Public Use" [R-5]
I. **>TEST FOR "PUBLIC USE
II. PUBLIC KNOWLEDGE IS NOT NECESSARILY PUBLIC USE UNDER 35 U.S.C. 102(b)
A. Commercial Versus Noncommercial Use and the Impact of Secrecy
1. "Public Use" and "Non-secret Use" Are Not Necessarily Synonymous
2. Even If the Invention Is Hidden, Inventor Who Puts Machine or Article Embodying the Invention in Public View Is Barred from Obtaining a Patent as the Invention Is in Public Use
3. There Is No Public Use If Inventor Restricted Use to Locations Where There Was a Reasonable Expectation of Privacy and the Use Was for His or Her Own Enjoyment
4. The Presence or Absence of a Confidentiality Agreement is Not Dispositive of the Public Use Issue
B. Use by Third Parties Deriving the Invention from Applicant
An Invention Is in Public Use If the Inventor Allows Another To Use the Invention Without Restriction or Obligation of Secrecy
C. Use by Independent Third Parties
Use by an Independent Third Party Is Public Use If It Sufficiently "Informs" the Public of the Invention or a Competitor Could Reasonably Ascertain the Invention
2133.03(b) "On Sale" [R-5]
PFAFF, ATLANTA, NETSCAPE
The on-sale bar applies when two conditions are satisfied before the critical date: (1) the claimed invention must be the subject of a commercial offer for sale; and (2) the invention must be ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998). An actual sale is not required for the activity to be an invalidating commercial offer for sale. Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361, 1365 (Fed. Cir. 2008). An attempt to sell is sufficient so long as it is “sufficiently definite that another party could make a binding contract by simple acceptance.” Id. (citing Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315, 1323 (Fed. Cir. 2002)). “In determining such definiteness, we review the language of the proposal in accordance with the principles of general contract law.” Id.
I. THE MEANING OF "SALE"
CAVENEY
An Examiner’s factual finding regarding what any reference discloses must be supported by a preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the standard that must be met by the PTO in making rejections”).
A. Conditional Sale May Bar a Patent
B. Nonprofit Sale May Bar a Patent
C. A Single Sale or Offer To Sell May Bar a Patent
D. A Sale of Rights Is Not a Sale of the Invention and Will Not in Itself Bar a Patent
E. Buyer Must Be Uncontrolled by the Seller or Offerer
II. OFFERS FOR SALE
A. Rejected or Unreceived Offer for Sale Is Enough To Bar a Patent
B. Delivery of the Offered Item Is Not Required
C. Seller Need Not Have the Goods "On Hand" when the Offer for Sale Is Made
D. Material Terms of an Offer for Sale Must be Present
III. SALE BY INVENTOR, ASSIGNEE OR OTHERS ASSOCIATED WITH THE INVENTOR IN THE COURSE OF BUSINESS
A. Sale Activity Need Not Be Public
B. Inventor's Consent to the Sale Is Not a Prerequisite To Finding an On Sale Bar
C. Objective Evidence of Sale or Offer To Sell Is Needed
IV. SALES BY INDEPENDENT THIRD PARTIES
A. Sales or Offers for Sale by Independent Third Parties Will Bar a Patent
B. Nonprior Art Publications Can Be Used as Evidence of Sale Before the Critical Date
2133.03(c) The "Invention" [R-5]
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
I. **The Invention Must Be "Ready for Patenting" **
II. INVENTOR HAS SUBMITTED A 37 CFR 1.131 AFFIDAVIT OR DECLARATION
III. SALE OF A PROCESS
"Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency." Scaltech Inc. v. Retec/Tetra L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999)
2133.03(d) "In This Country"
2133.03(e) Permitted Activity; Experimental Use [R-3]
ALLEN ENG'G
[T}here are thirteen factors indicative of experimental use:
(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, . . . (9) the degree of commercial exploitation during testing[,] . . . (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.
Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353 (Fed. Cir. 2002) (citation omitted)
2133.03(e)(1) Commercial Exploitation [R-1]
THE COMMERCIAL ACTIVITY MUST LEGITIMATELY ADVANCE DEVELOPMENT OF THE INVENTION TOWARDS COMPLETION
SIGNIFICANT FACTORS INDICATIVE OF "COMMERCIAL EXPLOITATION"
2133.03(e)(2) Intent
PARAGON
A witness’ interest is important in determining the weight to be given declaration evidence submitted during ex parte patent examination. Accord, Paragon Podiatry Lab., Inc. v. KLM Lab., Inc., 984 F.2d 1182, 1191 (Fed. Cir. 1993) (Holding inequitable conduct resulted from the failure to disclose to the examiner that the declarants who testified supporting patentability had a significant financial stake in the assignee of the invention.);
2133.03(e)(3) "Completeness" of the Invention [R-3]
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I. < EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY RE-DUCED TO PRACTICE
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II. < DISPOSAL OF PROTOTYPES
2133.03(e)(4) Factors Indicative of an Experimental Purpose [R-5]
2133.03(e)(5) Experimentation and Degree of Supervision and Control [R-5]
THE INVENTOR MUST MAINTAIN SUFFICIENT CONTROL OVER THE INVENTION DURING TESTING BY THIRD PARTIES
2133.03(e)(6) Permitted Experimental Activity and Testing [R-3]
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I. < DEVELOPMENTAL TESTING IS PERMITTED
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II. < MARKET TESTING IS NOT PERMITTED
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III. < EXPERIMENTAL ACTIVITY IN THE CONTEXT OF DESIGN APPLICATIONS
2133.03(e)(7) Activity of an Independent Third Party Inventor
EXPERIMENTAL USE EXCEPTION IS PERSONAL TO AN APPLICANT