Brigance, In re

• Decision Date: 04 June 1986
• Docket Number: No. 85-2561,85-2561
• Parties: In re Albert H. BRIGANCE. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1103

792 F.2d 1103

229 U.S.P.Q. 988

In re Albert H. BRIGANCE.

Appeal No. 85-2561.

United States Court of Appeals Federal Circuit.

June 4, 1986.

Charles Hieken, Boston, Mass., argued, for appellant.

John W. Dewhirst, Associate Solicitor, Office of the Solicitor, U.S. Patent and Trademark Office, Arlington, Va., argued, for appellee. With him, on brief, were Joseph F. Nakamura, Solicitor and Fred E. McKelvey, Deputy Solicitor.

Before DAVIS, SMITH, and NEWMAN, Circuit Judges.

EDWARD S. SMITH, Circuit Judge.

In this patent case, the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (board) sustained the patent examiner's rejection under 35 U.S.C. Sec. 102(b) of claims 1, 3-5, and 7 in application serial No. 799,500 by Albert H. Brigance (Brigance). We affirm.

Issue

The principal issue before this court is whether the board erred in affirming the examiner's rejection of claims 1, 3-5, and 7 of the Brigance application on the ground that the claimed subject matter was on sale, within the meaning of section 102(b), more than 1 year prior to the filing date of the application.

Background

On May 23, 1977, Brigance filed a patent application claiming an apparatus and a method for evaluating and recording student skill levels. ¹ The invention, labeled as the "Brigance Diagnostic Inventory of Basic Skills" (Inventory), was designed to be used both in connection with the development of educational programs for individual students having special needs and with the evaluation of the progress of each student while participating in the respective program. The stated objective of the Inventory was to improve methods and means for evaluating student skills while simplifying and integrating evaluation, diagnostic record keeping, and objective setting procedures. The subject matter described in the specification comprises an apparatus and technique for evaluating basic skills of students, a setting objectives feature used to develop viable objectives for improving the skills of each student during the period following evaluation, and a means for recording a succession of evaluations in a convenient manner to display the progress of each individual evaluated. Of the claims set forth by the patent application, only claim 8 covered the setting objectives feature described in the specification. ²

The examiner finally rejected claims 1, 4, 5, 7, and 8 under 35 U.S.C. Sec. 103 as obvious in view of prior art. On March 31, 1981, the board reversed his rejection under section 103 and issued a new rejection under 37 C.F.R. Sec. 1.196(b) under section 102(b) ³ based on the existence of a typewritten version of the Inventory and the offer of the Inventory for sale more than 1 year before the application filing date of May 23, 1977.

Brigance elected to resume prosecution before the examiner, resulting in the rejection of claims 1, 3-5, 7, and 8 under section 102(b). The examiner's rejection, like the previous board decision of March 31, 1981, was based upon the acts, performed by Brigance along with his assignee, Curriculum Associates, Inc., of both reducing the invention to practice and placing the invention on sale prior to the critical date. On February 28, 1983, the board sustained the examiner's rejection of claims 1, 3-5, and 7 under section 102(b); however, a new ground was asserted for rejecting claim 8. The board, determining that claim 8 was an obvious modification of the embodiments described by claims 1, 3-5, and 7 which claims were barred pursuant to section 102(b), rejected claim 8 under the combination 35 U.S.C. Secs. 102(b)/103. Brigance again elected remand to the examiner.

Further prosecution before the patent examiner resulted in the rejection of claims 1, 3-5, and 7 under section 102(b) and of claim 8 under sections 102(b)/ 103. On January 11, 1985, the board affirmed the examiner's rejection of claims 1, 3-5, and 7. However, after re-evaluating the entire patent prosecution file history, in view of supplemental declarations submitted by Brigance, the board reversed the examiner's rejection of claim 8. The board, in allowing claim 8, concluded that the specific physical placement of the setting objectives feature, a component of the embodiment covered only by claim 8, could be relied upon as an unobvious distinction from the embodiments, claimed in claims 1, 3-5, and 7, barred under section 102(b). We are concerned only with the board's rejection of claims 1, 3-5, and 7 and not with either claim 8 or any feature of the embodiment described therein.

The board sustained the examiner's rejection of claims 1, 3-5, and 7 after determining that Brigance and Curriculum Associates both reduced the invention to practice and offered the invention for sale, more than 1 year prior to filing the patent application. Reduction to practice, found to have occurred sometime during 1974 or 1975, was based upon a combination of events. First, Brigance prepared a typewritten copy of the Inventory in 1974 and later submitted the manuscript to the United States Copyright Office for registration in 1975. Second, in November 1975, Curriculum Associates placed a model of the Inventory on exhibit at the National Counsel of Teachers of English (NCTE) convention in San Diego, California. A memorandum, prepared by Curriculum Associates and attached to a brochure distributed at the convention, touted the model displayed at the convention as being either the fourth or fifth version that "was field tested and evaluated by a wide range of teachers in Northern California." Third, during the February 28, 1983, oral hearing before the board, counsel for Brigance and Curriculum Associates conceded that a model of the Inventory existed prior to the critical date, albeit in a typewritten form. Finally, the patent prosecution file history revealed that 2,500 reproductions of the typewritten copy of the Inventory were prepared prior to the critical date by Curriculum Associates. Based upon the totality of the evidence before it, the board concluded that, prior to the critical date, the Inventory was in a completed form that was satisfactory to the inventor.

The board relied on a copy of a brochure, distributed by Curriculum Associates prior to the critical date, on which to base its conclusion that the Inventory was offered for sale prior to the critical date. Specifically, the brochure offered the Inventory, as embodied in claims 1, 3-5, and 7, for sale at a discount rate if ordered prior to December 31, 1975. The board, having found both a complete reduction to practice of the Inventory and an offer to sell the Inventory prior to the critical date, concluded that the subject matter of claims 1, 3-5, and 7 was on sale, within the meaning of section 102(b), more than 1 year prior to the patent application filing date.

Analysis

The PTO met its initial burden of going forward by establishing a prima facie case that the subject matter covered by claims 1, 3-5, and 7 was on sale, within the meaning of section 102(b), prior to the critical date. ⁴ Curriculum Associates' preparation and subsequent exhibition of a typewritten copy of the Inventory at the NCTE convention, distribution of memoranda stating that the Inventory had been field tested and evaluated, and production of 2,500 copies of the Inventory, all of which occurred prior to the critical date, support the board's conclusion that the Inventory was satisfactory to the inventor and that reduction to practice had occurred. Curriculum Associates' distribution of a brochure, prior to the critical date, which brochure offered the Inventory for sale at a discount rate if ordered prior to December 31, 1975, is sufficient grounds for a finding that an offer was made, prior to the critical date, to sell the Inventory. Because an offer to sell a completed invention is sufficient to support a rejection under section 102(b), ⁵ we hold the board's conclusion, that the embodiment of the Inventory covered by claims 1, 3-5, and 7 was on sale prior to the critical date, is supported by the record.

In its attempt to rebut the PTO's prima facie case, Brigance asserts that the Inventory was not on sale, within the meaning of section 102(b), prior to the critical date. Brigance contends that the Inventory could not have been on sale because (1) the Inventory was not tested sufficiently to verify that it was operable and commercially marketable, and (2) the offers for sale were made not for profit, but were made solely for experimental purposes. Based on these contentions, Brigance urges us to hold that the board's determination, sustaining the examiner's rejection of claims 1, 3-5, and 7, was erroneous. After examining the totality of the circumstances surrounding Curriculum Associates' offers for sale of the Inventory, we must conclude that the board's findings are not clearly erroneous or in error as a matter of law.

This court has repeatedly recognized, when reviewing issues arising under the public use or on sale bar of section 102(b), that these issues must be determined by considering the totality of the circumstances. ⁶ Factors we have considered include: the length of the test period; whether any payment was made for the invention; whether there is any secrecy obligation on the part of the user; whether progress records were kept; whether persons other than the inventor conducted the asserted experiments; how many tests were conducted; and how long the test period was in relation to test periods of similar devices. ⁷ This list of factors is by no means all inclusive, but merely serves as a basis for objective analysis under section 102(b).

Brigance argues that the Inventory was not reduced to practice prior to the critical date and therefore the board's reliance on section 102(b) is erroneous. Brigance contends the embodiment of the Inventory, covered by claims 1, 3-5, and 7, was not tested sufficiently to verify that it was operable for its intended...