Ex Parte Cartier et al

Board of Patent Appeals and Interferences

Feb 17, 2009

10909768 (B.P.A.I. Feb. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JON P. CARTIER
and STEPHEN M. WOOD
__________

Appeal 2009-0243
Application 10/909,768
Technology Center 2800
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Decided:1 February 17, 2009
___________

Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0243
Application 10/909,768

This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1, 2, 18, 26-32, 34-39, 47-49, and 55. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE and REMAND.

B. PRIOR ART REJECTIONS
1. Discussion
The Examiner rejected the claims on appeal under either § 102(e) as
anticipated by Miniutti2 or § 103(a) as unpatentable over Miniutti in
combination with additional prior art.3 See Office Action dated January 25,
2006, at 2-7. In response, the Appellants submitted a Declaration of Steven
M. Wood under 37 C.F.R. § 1.131 dated July 18, 2006,4 and Appendices A
and B attached thereto to establish a date of invention prior to the effective
date of Miniutti. The Declaration alleges an actual reduction to practice “on
or about December, 2002.” Wood Declaration, para. 3.
The Examiner determined that “the declaration established reduction
to practice of the claimed invention or [sic, on] about December 2002, prior
to January 29, 2003, the effective date of the Miniutti et al ‘700 reference.”
Ans. 85; see also Final Office Action dated October 12, 2006, at 7 (“the
affidavit shows an actual reduction to practice of the claimed invention [as]

2 US Patent Application Publication US 2004/0145700 A1 to Miniutti et al.
published July 29, 2004, based on Application 10/353,062 filed January 29,
2003.
3 US Patent Application Publication US 2004/0096666 A1 to Knox et al.
published May 20, 2004 (“Knox”), and US Patent Application Publication
US 2004/0156086 A1 to Nishizawa et al. published August 12, 2004
(“Nishizawa”).
4 Hereinafter the “Wood Declaration.”
5 Examiner’s Answer dated October 17, 2007.
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Application 10/909,768

of December 2002”). For this reason, the Wood Declaration is sufficient to
antedate the filing date of Miniutti and overcome the rejections based on
Miniutti, either alone or in combination with the additional prior art.

2. Decision
The rejection of claims 1, 2, 18, 26, 31, 34, 47-49, and 55 under
35 U.S.C. § 102(e) as anticipated by Miniutti is reversed.
The rejection of claims 27-30 and 32 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Miniutti and Knox is reversed.
The rejection claims 35-39 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Miniutti and Nishizawa is reversed.
C. REMAND
The application is hereby remanded to the jurisdiction of the
Examiner for appropriate action consistent with the following discussion.
1. Appellants’ Evidence
To antedate the filing date of Miniutti, the Appellants submitted the
following evidence:
1. Declaration of Steven M. Wood under 37 C.F.R. § 1.131 dated
July 18, 2006.
2. A letter to Dan Freeman, an eyewear manufacturer, from Steve
Wood dated August 13, 2002.
3. A letter to Cheri Cole of CNC Lens Services from Steve Wood
dated December 13, 2002.
4. Electronic mail messages to swood@beloptix.com dated
November 18 and 26, 2002.
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Application 10/909,768

We make the following observations with respect to this evidence:
1. The Wood Declaration states:
Actual reduction to practice of the Invention occurred in the
United States on or about December, 2002 when prototype(s) of
the Invention were constructed and tested. Construction of the
prototype(s) is evidenced by the attached correspondence, in
Appendix B, dated respectively November 18, 2002; November
26, 2002 and December 13, 2002.

Wood Declaration, para. 3.
2. The letter from Steve Wood dated August 13, 2002 states:
I will send you some samples by this Thursday, but I wanted to
summarize the types of lens products that we could supply you.

* * * * *
I will send you some plano polarized in CR-39 so that you can
see how great these photochromics work with a 90% polarized
lens.
* * * * *
As for approximate costs, it is very quantity dependent. Small
quantities of polycarbonate photochromic would be in the $25
range, but with quantities of 10K or more, the prices would go
down to the $17-21 range. These prices include the lens,
photochromic coating, and hard coat. We are able to do custom
colors, which would be priced slightly higher than the prices
above.

3. The letter from Steve Wood dated December 13, 2002,
discusses the need for “plano polycarbonate polarized lenses that are not
hard coated” to which a photochromic coating is intended to be added to the
front surface of the lens.
4. The electronic mail messages to swood@beloptix.com dated
November 18 and 26, 2002 discuss shipping and supplying various lenses,
including polarized polycarbonate lenses and plastic polarized lenses.
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Application 10/909,768

2. Discussion
Section 102(b) of Title 35 of the United States Code states that a
person shall be entitled to a patent unless “the invention was . . . in public
use or on sale in this country, more than one year prior to the date of the
application for patent in the United States . . . .”
a. “On sale”
The Supreme Court explained the “on sale” bar as follows in Pfaff v.
Wells Electronics Inc., 525 U.S. 55, 67-68 (1998):
[T]he on-sale bar applies when two conditions are satisfied
before the critical date. First, the product must be the subject of
a commercial offer for sale. . . .
Second, the invention must be ready for patenting. That
condition may be satisfied in at least two ways: by proof of
reduction to practice before the critical date; or by proof that
prior to the critical date the inventor had prepared drawings or
other descriptions of the invention that were sufficiently
specific to enable a person skilled in the art to practice the
invention.

Based on the record before us, there is colorable evidence that the
claimed invention was “on sale” before the critical date.6 Thus, upon return
of the Application to the jurisdiction of the Examiner, the Examiner should
determine whether the evidence of record establishes, by a preponderance of
the evidence, that the claimed invention was “on sale” before the critical
date.
To this end, the Examiner should make fact findings consistent with
the answers to the following questions:

6 The critical date in this case for purposes of the “on sale” bar of 35 U.S.C.
§ 102(b) is August 2, 2003, i.e., one year before the August 2, 2004 filing
date of the Appellants’ application. See Pfaff, 525 U.S. at 57-58.
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1. Was the claimed invention the subject of a commercial offer for
sale in the United States before the critical date?
The Examiner should keep in mind that “[a] single offer to sell is
enough to bar patentability whether or not the offer is accepted.” A. B.
Chance Co. v. RTE Corp., 854 F.2d 1307, 1311 (Fed. Cir. 1988).
2. Was the claimed invention “ready for patenting,” e.g., reduced
to practice, before the critical date?7
3. If the claimed invention was the subject of a commercial offer
for sale in the United States and “ready for patenting” before the critical
date, which claims are rendered unpatentable by these activities?
As to this question, the Examiner should keep in mind that the sale of
a product produced by a claimed method renders the claimed method
unpatentable under 35 U.S.C. § 102(b). D.L. Auld Co. v. Chroma Graphics
Corp., 714 F.2d 1144, 1147-48 (Fed. Cir. 1983). Furthermore, the subject
matter of a sale or offer to sell may either fully anticipate the claimed
invention or render the claimed invention obvious by its addition to the prior
art. UMC Elec. Co. v. United States, 816 F.2d 647, 656 (Fed. Cir. 1987).
If the Examiner needs additional information to answer these
questions, the Examiner should request that information from the Appellants
in accordance with 37 C.F.R. § 1.105, e.g., in the form of interrogatories.
In the event the Examiner determines that the claimed invention was
“on sale” more than one year before the Appellants’ August 2, 2004 filing
date, the Examiner should reject the appropriate claims under 35 U.S.C.
§ 102(b).

7 Based on the record before us, the answer to this question is “yes.” See
Ans. 8; Final Office Action dated October 12, 2006, at 7.
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b. Public use
The Wood Declaration states that “prototype(s) of the Invention were
constructed and tested” on or about December, 2002. Wood Declaration,
para. 3.
“Public use” of a claimed invention under 35 U.S.C. § 102(b) has
been defined as “any use of that invention by a person other than the
inventor who is under no limitation, restriction or obligation of secrecy to
the inventor.” In re Smith, 714 F.2d 1127, 1134 (Fed. Cir. 1983).
Upon return of the Application to the jurisdiction of the Examiner, the
Examiner should also consider whether the claimed invention was in “public
use” before the critical date. To this end, the Examiner should request
information from the Appellants in accordance with 37 C.F.R. § 1.105, e.g.,
in the form of interrogatories, addressing the following questions:
1. What product(s) were tested prior to the critical date?
2. Who tested the product(s)?
3. What was the purpose of the testing?
4. What was the nature of the testing?
5. Was the product(s) tested in the United States?
6. Was the person(s) who tested the product(s) under an obligation
of secrecy to the inventor?
7. Was the use of the product(s) limited or restricted by the
inventor?
See, e.g. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1266 (Fed.
Cir. 1986) (citing Egbert v. Lippmann, 104 U.S. 333 (1881)).
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If the Examiner determines that the claimed invention was in “public
use” more than one year before the Appellants’ August 2, 2004 filing date,
the Examiner should reject the appropriate claims under 35 U.S.C. § 102(b).
D. CONCLUSION
This application, by virtue of its “special” status, requires immediate
action by the Examiner. MPEP § 708.01 (8th ed., Rev. 7, July 2008). It is
important that the Board of Patent Appeals and Interferences be promptly
informed of any action affecting the appeal in this case.

REVERSED and REMANDED
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PL Initial:
sld

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