Buddy is a recent father and a machinist at a local machine shop. One day while driving to work, Buddy conceived an idea for an improved baby stroller. He quickly worked out many of the details of how to build such an improved stroller, but he still had questions. Buddy later explained his idea to his employer and showed the employer detailed preliminary drawings of the stroller without any agreement as to confidentiality. Buddy wanted use of his employer’s machine shop to build a model. Buddy’s employer was also excited about the stroller idea and its commercial potential, and the two quickly reached an oral agreement. Buddy would have free use of the machine shop equipment and supplies after regular business hours to work on his model. In exchange, Buddy agreed to assign any patent rights in his invention to the employer for $1,000.00. Only Buddy and, occasionally, his employer were ever present in the shop when Buddy was working on the stroller. Buddy finalized the design just over a year later, and a nonprovisional patent application was on file within a month of finalization along with a recently executed written assignment of the rights in the invention to Buddy’s employer. During prosecution of the patent application, the examiner learned of the oral agreement between Buddy and his employer, and rejected the claims on the basis that the invention was on sale more than one year before the application filing date. Determine which of the following would provide the most reasonable basis for traversing the rejection in accordance with the patent laws, rules and procedures as related in the MPEP.
Explanation
Answer: C - 35 U.S.C. § 102(b); MPEP § 2133.03(b). MPEP § 2133.03(b), under the heading “I. The Meaning Of “Sale,” and subheading “D. A Sale of Rights Is Not a Sale of the Invention and Will Not in Itself Bar a Patent,” states “‘[a]n assignment or sale of the rights, such as patent rights, in the invention is not a sale of ‘the invention’ within the meaning of section 102(b).’” The sale must involve the delivery of the physical invention itself. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809 (Fed. Cir. 1986).” (A) is incorrect. Although reexaminations are limited to prior art patents and printed publications, that limitation is not present in original prosecution. MPEP § 2133.03(b) states “An impermissible sale has occurred if there was a definite sale, or offer to sell, more than 1 year before the effective filing date of the U.S. application and the subject matter of the sale, or offer to sell, fully anticipated the claimed invention or would have rendered the claimed invention obvious by its addition to the prior art. Ferag AG v. Quipp, Inc., 45 F.3d 1562, 1565, 33 USPQ2d 1512, 1514 (Fed. Cir. 1995).” (B) and (D) are incorrect. There is no requirement that on-sale activity be public. See MPEP § 2133.03(b), under the heading “III. Sale By Inventor, Assignee Or Others Associated With The Inventor In The Course Of Business,” and subheading “A. Sale Activity Need Not Be Public.” (E) is wrong at least because an on-sale bar does not require an actual sale. A bar can also be based on an offer to sell. MPEP § 2133.03(b), under the heading “II. Offers For Sale.”
