286 F.3d 1326 (Fed. Cir. 2002), 01-1640, In re Kollar

Docket Nº:01-1640
Citation:286 F.3d 1326
Party Name:In re Kollar
Case Date:April 11, 2002
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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286 F.3d 1326 (Fed. Cir. 2002)

62 U.S.P.Q.2d 1425

In re John KOLLAR.

Nos. 01-1640.

United States Court of Appeals, Federal Circuit

April 11, 2002

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John Kollar, of Wyckoff, NJ, pro se.

John M. Whealan, Solicitor, of Arlington, VA, representing the Director of the United States Patent and Trademark Office. With him on the brief was Kristin L.

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Yohannan, Associate Solicitor. Of counsel was Mark Nagumo, Associate Solicitor.

Before LOURIE, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and CLEVENGER, Circuit Judge.

LOURIE, Circuit Judge.

John Kollar appeals from the final decision of the United States Patent and Trademark Office ("PTO") Board of Patent Appeals and Interferences holding the claims in Kollar's Patent Application No. 08/657,564 to be unpatentable under the on-sale bar of 35 U.S.C. § 102(b). In re Kollar, No. 96-C-7375 (Bd. Pat.App. & Inter. July 25, 2001) ("Kollar III"). Because the Board erred in determining that the process claimed in the '564 application was on sale within the meaning of § 102(b), we vacate and remand.


The '564 application, filed on December 5, 1995, is directed to a process for preparing a dialkyl peroxide by reacting one or more alcohols and/or an olefin with a monoalkyl hydroperoxide in the presence of an effective amount of an insoluble, heterogeneous acidic catalyst and separating the reaction mixture from the catalyst. The '564 application describes the claimed process as a low-cost method of producing various dialkyl peroxides, such as di-tert-butyl peroxide, which in turn can be used to make, inter alia, ethylene glycol. Ethylene glycol is used in the manufacture of a number of commercial products, ranging from polyester fibers to mining explosives. Claim 1 of the '564 application, the only claim at issue in this appeal, 1 reads as follows:

1. A process for the preparation of a dialkyl peroxide comprising reacting one or more members selected from the group consisting of an alkylating alcohol of the formula ROH, and an olefin of the formula (R2)(R2a)C=C(R3)(R3a), wherein R is C sub1- C sub10 alkyl, and R2, R2a, R3, and R3a are independently selected from hydrogen and C sub1 -C sub10 alkyl; with a hydroperoxide of the formula R1OOH, wherein is R1 is C sub1 -C sub10 alkyl; in the presence of an effective amount of a substantially solid, insoluble, heterogenous [sic] acidic catalyst; followed by separation of the reaction mixture from said catalyst.

The examiner finally rejected claims 1 through 17 under § 102(b) based upon a purported sale of the invention by Kollar's assignee, Redox Technologies, Inc., a company owned and operated by Kollar, to Celanese Corporation. 2 Kollar appealed that rejection to the Board.

The Board, in an exhaustive analysis, affirmed the examiner's rejection of claims 1 through 17 under the on-sale bar of § 102(b). In re Kollar, No. 96-C-7375, slip op. at 47 (BPAI July 17, 2000) ("Kollar I"). The Board determined that a July 1, 1980, agreement between Redox and Celanese entitled "DEFINITIVE AGREEMENT" ("the Celanese Agreement") constituted a firm offer to sell embodiments of the claimed process, thus triggering the bar of § 102(b). Id. In the Celanese Agreement, the parties essentially agreed to share technology and coordinate their research efforts with the ultimate goal of designing and building a commercial plant

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capable of implementing the claimed process to manufacture ethylene glycol. The Board determined that § 102(b) applied because Celanese received what it termed "a right to commercialize" Kollar's invention, and the necessary technical information to utilize that invention, in exchange for a series of royalty payments. Id. The Board further determined that the "sale" by Redox could not be considered to be experimental because there was no provision in the agreement obligating Celanese to experiment with the claimed process, and in any event Kollar admitted on the record that he had reduced the invention to practice prior to the execution of that agreement. Id. at 45.

Kollar thereafter filed a request for rehearing, which resulted in the Board issuing two additional opinions clarifying its rationale for affirming the examiner's rejection of claims 1 through 17. In re Kollar, No. 96-C-7375 (BPAI Feb. 28, 2001); Kollar III. In Kollar III, the Board further explained its rationale for concluding that the Celanese Agreement barred Kollar from obtaining a patent to the claimed process as follows:

[A]n embodiment of a claimed process can be physically represented by a written description in a document which not only identifies the process but also enables the practice of that chemical process by one of ordinary skill in the art .... [T]he preponderance of the evidence shows that appellant ... transferred documents containing a written description of the claimed process ... [and] thus commercially exploit[ed] the claimed chemical process....

Kollar III, slip op. at 8, 9 (emphases added).

Kollar appeals from the Board's final decision. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).


Section 102(b) provides in relevant part that "[a] person shall be entitled to a patent unless ... the invention was ... on sale in this country, more than one year prior to the date of the application for patent in the United States...." 35 U.S.C. § 102(b) (1994). The Supreme Court established a two-prong test governing the application of the on-sale bar: "First, the product must be the subject of a commercial offer for sale.... Second, the invention must be ready for patenting." Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998). The PTO bears the initial burden of demonstrating that the preponderance of the evidence establishes, prima facie, facts supporting the conclusion that the claimed invention was on sale within the meaning of § 102(b). In re Brigance, 792 F.2d 1103, 1107, 229 USPQ 988, 990 (Fed.Cir. 1986). Whether an invention is "on sale" within the meaning of § 102(b) is a question of law based on underlying factual findings. Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1257, 57 USPQ2d 1699, 1702 (Fed.Cir. 2001). We review...

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