Ex parte Bradbury

Board of Patent Appeals and Interferences

Jun 25, 1998

08786741 (B.P.A.I. Jun. 25, 1998)

Application for patent filed January 27, 1997. According1
to appellants, the application is a continuation of Application
08/323,273, filed October 14, 1994, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PHILIP E. BRADBURY
and
KARL E. VOTH
_____________
Appeal No. 98-1380
Application 08/786,7411
______________
HEARD: June 11, 1998
_______________
Before CALVERT, COHEN and ABRAMS, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 98-1380
Application 08/786,741
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
to 16, all the claims in the application.
The subject matter in issue concerns a roll forming
machine which can be changed from making Z-shaped purlins to
making C-shaped purlins, and vice versa, by changing the vertical
position of the roll stands on one side of the machine relative
to the roll stands on the other side. Claim 11 appears to be the
broadest claim on appeal, and reads:
11. A roll former line for forming different shapes
comprising:
a bed;
a vertically-positioned linear bearing attached to the
bed;
at least one first roll stand attached to said bed for
vertical adjustable movement;
top, bottom, and middle spindles journaled to said
first roll stand in vertical alignment with each other;
top, bottom, and middle forming rolls disposed on said
top, bottom, and middle spindles, respectively, said top and
bottom forming rolls working against opposite sides of said
middle forming roll, said top and middle forming rolls acting as
a first alternative pair of forming rolls and said bottom and
middle forming rolls acting as a second alternative pair of
forming rolls;
Appeal No. 98-1380
Application 08/786,741
Mr. Bradbury states that he is President and Chief2
Executive Officer of The Bradbury Company, Inc. (hereinafter
“Bradbury”), assignee of the instant application (D. ¶1;
S.D. ¶1).
On page 3 of the answer, the examiner, apparently inadver-3
tently, does not list the Supplemental Declaration as part of the
3
adjustment means for moving the first roll stand
vertically on the bed;
at least one second roll stand attached to said bed on
an opposite side from said first roll stand;
at least two spindles mounted on said second stand in
vertical alignment to each other, each spindle of said second
stand supporting a forming roll wherein the adjustment means
on the first roll stand can be raised or lowered so as to use
alternative pairs of forming rolls on the first stand in con-
junction with the forming rolls on the second roll stand to
form different shapes.
Claims 1 to 16 stand finally rejected under 35 U.S.C.
§ 102(b), on the ground that the subject matter thereof was “on
sale” more than one year prior to appellants’ effective filing
date, i.e., prior to October 14, 1993 (the “critical date”).
The rejection in issue is based on evidence filed
by appellants, consisting of a Declaration (“D.”) and Supple-
mental Declaration (“S.D.”) of H. David Bradbury, filed on 2
May 2, 1997, and July 23, 1997, respectively, together with
numerous documents. 3
Appeal No. 98-1380
Application 08/786,741
evidence relied upon in making the rejection.
4
Mr. Bradbury states (D. ¶2, S.D. ¶2):
On or about June 2, 1993, pursuant to a pur-
chase order (P.O.# 7120-M), Metal Building
Components, Inc. (hereinafter “MBCI”) agreed
to purchase a roll former (hereinafter the
“MBCI roll former”) that was to be sub-
sequently designed and manufactured by
Bradbury.
Purchase order 7120-M (Invoice 19689) describes the item ordered
simply as “Bradbury Rollforming Equipment,” with a price of
$951,234.00, a payment of $285,370.20 being “NOW DUE.” There is
no evidence in the record of the circumstances surrounding this
order, and in particular, whether the equipment ordered was to be
designed by Bradbury from scratch, or whether it would be a
modification of Bradbury’s existing equipment. Two additional
invoices for the same purchase order, dated September 8, 1993
(No. 20023) and March 28, 1994 (No. 21132), indicate,
respectively, a further balance due of $285,370.20, and a balance
due prior to shipment of $399,253.60.
Mr. Bradbury goes on to describe the machine as follows
(D. ¶3, S.D. ¶3):
The MBCI roll former constructed pursuant
to the purchase order included a mechanical
Appeal No. 98-1380
Application 08/786,741
5
system and an electrical system that con-
trolled the components of the mechanical
system. The mechanical system included, for
each station of the MBCI roll former, a pair
of roll stands, two spindles disposed in one
roll stand and three spindles disposed in the
other roll stand, forming rolls attached to
the spindles, various mechanical components
for changing the elevation of one roll stand
relative to the other roll stand, and other
mechanical components. The mechanical system
also included means for rotatably driving the
spindles of a number of the roll stands. The
electrical system of the MBCI roll former
included wiring and computer software to
control the overall operation of the MBCI
roll former.
Appellants also submitted a number of drawings dated
prior to the critical date (documents 000302 to 000433 and 000435
to 000473), and counsel for appellants acknowledged at the
hearing that at least one of the claims on appeal was readable on
the drawings which were in existence at the critical date. Since
appellants state on page 2 of their brief that all claims stand
or fall together, it is unnecessary to treat the various claims
separately, and we will simply refer to the machine ordered by
MBCI as “the invention.” The evidence outlined above shows that
prior to the critical date, there was a sale; the question to be
Appeal No. 98-1380
Application 08/786,741
6
resolved is whether that sale gave rise to an on-sale bar under
35 U.S.C. § 102(b).
According to Mr. Bradbury’s Supplemental Declaration:
5. As of October 14, 1993, many of the
individual mechanical components of the MBCI
roll former were not completely fabricated or
were not yet received by Bradbury from
outside companies responsible for the
fabrication.
6. As of October 14, 1993, the overall
assembly of the components of the mechanical
system of the MBCI roll former had not yet
begun. That overall assembly began in
December, 1993.
7. As of October 14, 1993, the MBCI roll
former was not operable.
8. As of October 14, 1993, the MBCI roll
former had not been tested.
This evidence establishes that, as of the critical date, there
was no physical embodiment of the machine in existence, and
consequently it had not been actually reduced to practice.
However, a physical embodiment of the invention, or actual
reduction to practice, are not necessarily prerequisites to
Appeal No. 98-1380
Application 08/786,741
On March 9, 1998, the Supreme Court granted certiorari in4
this case (118 S.Ct. 1183), limited to the following Question 1:
In view of the longstanding statutory definition that
the one-year grace period to an “on sale” bar can start
to run only after an invention is fully completed,
should the Pfaff patent have been held invalid under
35 U.S.C. 102(b) when Mr. Pfaff’s invention was
admittedly not “fully completed” more than one year
before he filed his patent application?
See Mueller, Conception, Testing, Reduction to Practice: When is
it Really on Sale?, 80 J.PTO Socy. 305, 316 (May 1998).
7
application of the on-sale bar. Pfaff v. Wells Elecs., Inc.,
124 F.3d 1429, 1433, 43 USPQ2d 1928, 1931 (Fed. Cir. 1997).4
In holding that there was an on-sale bar, the examiner
cites UMC Elecs. Co. v. United States, 816 F.2d 647, 2 USPQ2d
1465 (Fed. Cir. 1987), cert. denied, 484 U.S. 1025 (1988), and
KeyStone Retaining Wall Sys. Inc. v. Westrock Inc., 997 F.2d
1444, 27 USPQ2d 1297 (Fed. Cir. 1993). These cases, like Pfaff,
hold that a reduction to practice of the claimed invention is not
an absolute requirement of the on-sale bar. UMC, 816 F.2d at
656, 2 USPQ2d at 1471; KeyStone, 997 F.2d at 1452, 27 USPQ2d at
1303. In UMC (as in Pfaff), it was determined that there was
Appeal No. 98-1380
Application 08/786,741
8
an on-sale bar, while in KeyStone, the case was remanded for a
determination of whether what was offered for sale was an embodi-
ment of the claimed invention.
Appellants, on the other hand, cite in support of their
position a number of other cases, decided after UMC, which deal
with the issue of whether there was an on-sale bar: Seal-Flex,
Inc. v. Athletic Track and Court Constr., 98 F.3d 1318, 40 USPQ2d
1450 (Fed. Cir. 1996); Micro Chem. Inc. v. Great Plains Chem.
Co., 103 F.3d 1538, 41 USPQ2d 1238 (Fed. Cir.), cert. denied,
117 S.Ct. 2516 (1997); Robotic Vision Sys., Inc. v. View Eng’g,
Inc., 112 F.3d 1163, 42 USPQ2d 1619 (Fed. Cir. 1997); and Kolmes
v. World Fibers Corp., 107 F.3d 1534, 41 USPQ2d 1829 (Fed. Cir.
1997).
In UMC, the court states (816 F.2d at 656-57, 2 USPQ2d
at 1471-72):
[W]e simply say here that the on-sale bar
does not necessarily turn on whether there
was or was not a reduction to practice of
the claimed invention. All of the
circumstances surrounding the sale or offer
to sell, including the stage of development
of the invention and the nature of the
invention, must be considered and weighed
against the policies underlying section
102(b).
. . . If the inventor had merely a
conception or was working towards development
Appeal No. 98-1380
Application 08/786,741
9
of that conception, it can be said there is
not yet any “invention” which could be placed
on sale.
In determining that there was an on-sale bar in that case, the
court noted the following (816 F.2d at 657, 2 USPQ2d at 1472):
[As of the critical date], the development of
the subject invention was far beyond a mere
conception. Much of the invention was
embodied in tangible form. The prior art
devices embodied each element of the claimed
invention, save one, and that portion was
available and had been sufficiently tested to
demonstrate to the satisfaction of the inven-
tor that the invention as ultimately claimed
would work for its intended purpose. Thus,
we conclude from the unchallenged facts with
respect to the commercial activities of UMC,
coupled with the extent to which the
invention was developed, the substantial
embodiment of the invention, the testing
which was sufficient to satisfy the inventor
that his later claimed invention would work,
and the nature of the inventor’s contribution
to the art, that the claimed invention was on
sale within the meaning of section 102(b).
We do not find the factors noted by the court in UMC,
supra, to be present in the instant case. While there is no
evidence here as to whether or not prior art devices embodied any
element of the claimed invention, it appears from Mr. Bradbury’s
declaration (S.D. ¶8) that no testing had been done. Thus,
although Mr. Bradbury does not so state, it does not appear that
it could have been demonstrated to his satisfaction that the
Appeal No. 98-1380
Application 08/786,741
Document 000530 purports to be a summary of what mechan-5
ical components of the invention were not finished as of the
critical date. However, there is no evidence in the record to
show who prepared this document or to establish its accuracy.
We have therefore not given it any consideration.
10
invention would work for its intended purpose. It seems from the
evidence that by the critical date there was only a conception,
as embodied in the drawings, and that some parts of the invention
had been fabricated. 5
According to Seal-Flex (98 F.3d at 1324, 40 USPQ2d at
1454),
[the UMC] case did not turn on whether the
invention had been “extensively developed” at
the time it was offered for sale, but on
whether it was known that the invention would
work for its intended purpose without further
testing or evaluation.
Likewise, in Micro Chem., it is stated (103 F.2d at 1545, 41
USPQ2d at 1244):
UMC thus stands for the proposition that,
even though the technical requirements of a
reduction to practice have not been met, a
sale or a definite offer to sell a
substantially completed invention, with
reason to expect that it would work for its
intended purpose upon completion, suffices to
generate a statutory bar.
Appeal No. 98-1380
Application 08/786,741
11
The examiner takes the position that (answer, p. 7):
The substantial payments for the construction
of the roll former apparatus prior to the
critical date presumes [sic: demonstrates?]
that both parties were completely knowledge-
able that the roll former apparatus would
work for its intended purpose.
However, we do not consider that this inference can be drawn,
when one considers the statement of Mr. Bradbury, supra, that the
purchase order was an agreement to purchase a roll former which
was “to be subsequently designed and manufactured.” The machine
which was the subject of the purchase order was not an “off the
shelf” item, and while MBCI obviously was confident that Bradbury
could design a machine which would work, this is not to say that
it was known that it would work without further testing. As Mr.
Bradbury states (D. ¶5), after the machine was assembled (which
was not until after the critical date (S.D. ¶6)), it was tested
at Bradbury “to determine whether it would operate,” beginning
about March 1994. Mr. Bradbury also refers to documents 000200
to 000252, which describe some of the problems discovered in the
testing at Bradbury and MBCI (D. ¶6).
Appeal No. 98-1380
Application 08/786,741
12
We also do not consider the instant case to be
analogous to the situation involved in Pfaff. In that case, the
court noted that (124 F.3d at 1434, 43 USPQ2d at 1932):
The only step not fully performed at the
time of the sale was the customized tooling
for manufacturing the invention . . . .
The invention in this case is mechanical
and there is no argument that it contains
complicated components or involves a complex
interaction of parts. The step of finishing
the customized tooling was, therefore,
routine and not a major step in the
completion of an embodiment of the invention.
Under all of the circumstances, including the
completion of engineering drawings, the
ordering of production tooling, and the
commencement of fabrication of the tooling
necessary to manufacture the invention for a
specific customer, it is clear that more than
a mere concept was on sale. The
substantially completed socket had entered
the production phase prior to the critical
date and a specific purchase order was being
filled.
By contrast, in this case the invention is embodied in a large,
relatively complex machine costing almost one million dollars,
rather than a mass-produced item such as the socket involved in
Pfaff, and the sale was of a single machine, rather than of
thousands of sockets. In accordance with the above-quoted
language from Pfaff, these factors militate against a finding
Appeal No. 98-1380
Application 08/786,741
13
that what occurred after the critical date, i.e., assembly and
testing of the machine, was merely “routine and not a major step
in the completion of an embodiment of the invention.” Unlike
Pfaff, it appears to us that here Bradbury sold a concept of an
invention. Although Bradbury was filling a specific purchase
order, the order was for a machine yet to be designed.
In Robotic Vision Sys., the court states (112 F.3d
1167-68, 42 USPQ2d 1623-24):
An offer of sale, to be a bar within the
meaning of section 102(b), must be of an
invention that is substantially complete
at the time of the offer. See Micro Chem.,
103 F.3d at 1545, 41 USPQ2d at 1243. If mere
discussions prior to the critical date, or
even an agreement to develop and provide a
device that had not yet been invented,
developed, or completed were to be held to be
a bar to patentability, then collaboration
between inventors and customers would be
greatly impeded. Patent applications would
be required to be filed prematurely, before
an invention was completed. The on-sale bar
was not intended to prevent discussions
between potential inventor-suppliers and
customers concerning inventions not yet com-
pleted. Thus, the later completion of an
invention concerning which an alleged offer
to sell had been made earlier does not relate
back to the date of that offer.
This language is relevant here. Bradbury agreed to develop and
provide MBCI with a machine which was not yet in existence.
Whether it had been conceived at the time of the sale (purchase
Appeal No. 98-1380
Application 08/786,741
14
order) is not clear from the record, but by the critical date it
had not been developed or completed. As discussed above, the
invention involved in the present case is such that until it had
at least been assembled, let alone tested, it could not be said
to be substantially complete (Micro Chem., 103 F.3d at 1545, 41
USPQ2d at 1244; Pfaff, 124 F.3d at 1434, 43 USPQ2d at 1932) and,
therefore, would not be subject to the on-sale bar of § 102(b).
Since the assembly of the machine embodying the invention did
not occur until after the critical date, there is no on-sale
bar here.
Conclusion
The examiner’s decision to reject claims 1 to 16 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Appeal No. 98-1380
Application 08/786,741
15
Administrative Patent Judge )

Appeal No. 98-1380
Application 08/786,741
16
Martin J. Hirsch
Marshall, O’Toole, Gerstein, Murray & Borun
6300 Sears Tower
233 South Wacker Drive
Chicago, IL 60606-6402