An offer for sale of the necessary components of the claimed invention triggers an on-sale bar even if the components require some assembly in order for the claimed invention to be put into operation. “The law only requires that the invention be ‘ready for patenting,’ that is, the ‘descriptions of the invention … were sufficiently specific to enable a person skilled in the art to practice the invention.’”
Background / Facts: The patent being asserted here is directed to snowball machines for creating a confection of ice shavings, flavored with various syrups and typically served in a cone-shaped paper cup. The patentee contracted with its supplier to manufacture the necessary constituent components of the claimed invention before the on-sale bar critical date, one year ahead of filing its patent application. The contract included the prerequisite offer for sale and it is not disputed that the claimed cam assembly was ready for patenting. The claim preamble, however, does not recite an unassembled collection of components, but rather, “[a] cam assembly for an icemaker having a pusher arm with ratchet teeth.”
Issue(s): Whether the individual and unassembled components of the transaction constituted the patented invention.
Holding(s): Yes. “[The patentee] has not provided any persuasive reason why this general proscription [that the preamble does not limit the claims] should not apply. [The patentee] may not escape the consequences of the on-sale bar by mere recitation to the portion of the preamble referring to the ‘icemaker having a pusher arm with ratchet teeth.’ The law only requires that the invention be ‘ready for patenting,’ that is, the ‘descriptions of the invention … were sufficiently specific to enable a person skilled in the art to practice the invention.’ … It is not necessary for the assemblies or the part to be ready to be put into operation for the on-sale bar to apply. [The patentee] has utterly failed to point to any evidence as to what else, beyond the parts or the assembly, the ordinary artisan would need to practice the claimed invention.”