Ex parte Hicks

Board of Patent Appeals and Interferences

Sep 26, 2001

08318205 (B.P.A.I. Sep. 26, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 35

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RALPH L. HICKS
__________

Appeal No. 1997-0616
Application No. 08/318,205
___________

HEARD: SEPTEMBER 13, 2001
___________

Before GARRIS, DELMENDO, and PAWLIKOWSKI, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 13 through 30, 32
through 53, and 55 through 57, which are all of the claims
pending in the above-identified application.1

1 In response to the final Office action of February 20,
1996 (paper 19), the appellant submitted an amendment under 37
CFR § 1.116 (1981) on May 20, 1996 (paper 22), proposing the
cancellation of claim 54 and changes to claims 46 and 57. The
examiner indicated in the advisory action of June 13, 1996
Appeal No. 1997-0616
Application No. 08/318,205

2
The subject matter on appeal relates to a method of drying
fuel gas containing water vapor and at least one pollutant
comprising at least one member of the group consisting of
volatile organic compounds, hydrogen sulfide, and other gaseous
pollutants. (Appeal brief, page 3.) Further details of this
appealed subject matter are recited in illustrative claim 13
reproduced below:
13. A method of drying fuel gas containing water
vapor and at least one pollutant comprising at least
one member of the group consisting of volatile organic
compounds, hydrogen sulfide and other gaseous
pollutants, said method comprising:

A. bringing said fuel gas into contact, in
a gas/liquid contact vessel, with a
liquid desiccant having an affinity for
said water vapor and pollutant, thereby
transferring water vapor and pollutant
from said fuel gas into said desiccant;

B. reconcentrating resultant rich
desiccant containing water and
pollutant by introducing said desiccant
into a reconcentration system
comprising a reboiler having a heating
vessel, liquid and gas spaces in said
heating vessel, a liquid outlet from
said liquid space, and a column having
a gas and/or vapor transmitting
connection between said heating vessel
gas space and said column and a vapor
outlet for discharging gas and/or vapor
from said column;

(paper 25) that the amendment will be entered for purposes of
this appeal.
Appeal No. 1997-0616
Application No. 08/318,205

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C. maintaining a total pressure of at
least about 25 PSIA in said heating
vessel gas space while expelling
pollutant from rich desiccant in said
heating vessel and into said column;
and

D. discharging gaseous pollutant through
said column vapor outlet, while
preventing discharge of said gaseous
pollutant from said reconcentration
system into the atmosphere and
recovering reconcentrated desiccant.

The examiner has not relied on any prior art reference as
evidence of unpatentability.
Nevertheless, claims 13 through 30, 32 through 53, and 55
through 57 on appeal stand rejected under 35 U.S.C. § 102(b) as
"based upon a public use or sale of the invention." (Examiner’s
answer, page 3; final Office action, pages 3-4.)
We reverse the aforementioned rejection.
The examiner points out that the appellant received, more
than one year before the effective filing date of the subject
application, a purchase order from an oil company to investigate
alternatives for VOC emission control and to provide a
recommendation. (Final Office action, page 3; appellant's
statement captioned "INFORMATION RE PRE-CRITICAL DATE ACTIVITY,"
filed May 24, 1993, paper 5.) The examiner then refers to page
1 of the appellant's supplemental statement ("SUPPLEMENTAL
Appeal No. 1997-0616
Application No. 08/318,205

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INVENTOR'S STATEMENT") filed August 8, 1994 (paper 11), which
discusses that the oil company "engaged" an equipment fabricator
to build a portion of the plant in which the claimed method
"might be practiced." (Final Office action, page 3.) Further,
the examiner finds: "Applicant then met with the equipment
fabrication [sic] to familiarize the equipment manufacturer with
the method and discuss changes in equipment design to
accommodate the method if it were accepted by the oil company."
(Id. at pages 3-4.) Based on these observations, the examiner
concludes as follows:
[I]t appears that the oil company, equipment
manufacturer and applicant were in possession of the
invention and were working to manufacture and build a
plant design for VOC emission control based on
applicant's ideas which are directly related to the
claimed invention constituting a statutory on-sale
bar. [Final Office action, p. 4.]

In the answer, the examiner's position is summarized as
follows:
It is maintained that the Examiner is not in error in
interpreting neither the Information RE-Pre-Critical
Date Activity nor the Supplemental Inventor's
Statement [sic] that these documents provide that an
"Offer to Sell" has been made by the Appellant Ralph
Hicks and the U.S. Oil Company and therefore the
invention has been reduced to practice and appellant
has not established an Experimental Use Scenario and
thus an exception to Public Use or Sale. [Examiner's
answer, p. 5.]

Appeal No. 1997-0616
Application No. 08/318,205

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On the other hand, the appellant argues that the facts and
the law do not support the examiner's conclusions. (Appeal
brief, pages 4-7.) The appellant further contends that the
activities described in the appellant's statements did not
trigger an "on-sale" bar under 35 U.S.C. § 102(b) because there
was no offer, prior to the critical date of September 11, 1991,
"to sell embodiments of the claimed invention." (Reply brief,
pages 5-6.) We agree.
In Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998),
the Supreme Court held that an "on-sale bar" under 35 U.S.C.
§ 102(b) is triggered if two conditions are satisfied:
(i) the invention must have been the subject of a
commercial offer for sale more than one year
before the patent application was filed; and
(ii) the invention must have been ready for patenting
more than one year before the filing of the
application.
The second condition may be satisfied by (a) proof of reduction
to practice prior to the critical date or (b) proof that prior
to the critical date the inventor had prepared drawings or other
descriptions of the invention sufficiently specific to enable a
person skilled in the art.
Appeal No. 1997-0616
Application No. 08/318,205

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In the case before us, we determine that the first
condition is not satisfied. Our reasons follow.
We start with the statute. 35 U.S.C. § 102(b) (2001)
states:
(b) the invention was patented or described in a
printed publication in this or a foreign country or in
public use or on sale more than one year prior to the
date of the application for patent in the United
States...[Underscoring added.]

Thus, the plain text of section 102(b) provides that it is the
"invention" which must be "in public use or on sale more than
one year prior to the date of the application for patent..."
Cf. Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1217, 48
USPQ2d 1010, 1019 (Fed. Cir. 1998) (approving the district
court's determination that the "on-sale bar" does not apply
where the offer did not involve a sale or an offer to sell the
invention itself).2
Applying this principle, we determine that the first
condition of the "on-sale bar" test in Pfaff is not met in this
case. Specifically, the examiner has relied on the appellant's
statements regarding an offer to undertake a feasibility study
on whether an embodiment of the invention should be installed in

2 See also Donald S. Chisum, Chisum on Patents § 6.02[6],
at 6-67 (2000).
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Application No. 08/318,205

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one of the oil company's plants or whether an alternative system
should be installed. (Appellant's statement of May 24, 1993,
page 1.) In response to the appellant's offer, the oil company
issued a purchase order for the offeror to "'provide process
engineering services and assist buyer's...project engineer to
investigate alternatives and recommend solution for
VOC...emission control system...'" (Id.) It is clear,
therefore, that the sale or the offer to sell did not involve an
embodiment of the invention as required under § 102(b).
Since the first condition is not met, we need not discuss
whether the second condition ("ready for patenting") is
satisfied.
As to the examiner's allegation that the invention was in
"public use" before the critical date, we note that "'[p]ublic
use' of a claimed invention under section 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,
218 USPQ 976, 983 (Fed. Cir. 1983) (citing Egbert v. Lippmann,
104 U.S. 333, 336 (1881)).
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Application No. 08/318,205

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Here, the examiner has not adequately established the
elements necessary to support a conclusion of "public use" prior
to the critical date.
For these reasons, we reverse the examiner’s rejection
under 35 U.S.C. § 102(b) of all of the appealed claims.
The decision of the examiner is reversed.
REVERSED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

RHD/kis
Appeal No. 1997-0616
Application No. 08/318,205

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