       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
              __________________________

                 (Serial No. 10/843,833)
     IN RE CHARLES CECCARELLI, STEVEN
        DELAPLAIN, AND AARON MARTIN
            __________________________

                      2010-1054
              __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
               ___________________________

              Decided: November 19, 2010
             ___________________________

    DANA L. DREXLER, Michael P. Mazza, LLC of Glen
Ellyn, Illinois, argued for appellants. With her on the
brief was MICHAEL P. MAZZA.

    RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Arlington,
Virginia, argued for the Director of the United States
Patent and Trademark Office. With him on the brief were
KRISTI L.R. SAWERT and FRANCES M. LYNCH, Associate
Solicitors.
              __________________________
IN RE CECCARELLI                                          2


  Before RADER, Chief Judge, and LOURIE, and MOORE,
                   Circuit Judges.
   Opinion for the court filed by Chief Judge RADER, in
           which Circuit Judge LOURIE joins.
    Dissenting opinion filed by Circuit Judge MOORE.
RADER, Chief Judge.
     The Board of Patent Appeals and Interferences af-
firmed the Examiner’s rejection of claims 1, 2, 5-15, and
17 as anticipated under 35 U.S.C. § 102(b) and claims 3,
4, and 16 as obvious under 35 U.S.C. § 103(a) of U.S.
Patent Application No. 10/843,833 (“the application”).
Because the sale at issue was experimental, not commer-
cial, this court reverses.
                             I
    The application, entitled “Side Puller Accessory
Frame for a Car Carrier and for a Tow Truck,” was filed
on May 11, 2004 by Charles Ceccarelli, Steven Delaplain,
and Aaron Martin (collectively, “Ceccarelli”), claiming
benefit to a provisional application filed on May 15, 2003.
The application claims a side puller accessory frame that
is mounted on a car carrier or tow truck for pulling loads,
such as disabled vehicles.
    The Board affirmed the Examiner’s rejection of claims
1, 2, 5-15, and 17 because an invoice, dated April 18,
2002, evinced a commercial sale of the invention more
than a year before the priority date. The invoice did not
indicate that the sale was for an experimental use. The
Board also affirmed the Examiner’s rejection of claims 3,
4, and 16 as obvious in light of the product sold in accor-
dance with that invoice and U.S. Patent No. 5,845,664
(“the Ryder patent”).
   Ceccarelli appeals the Board’s decision.     This court
3                                          IN RE CECCARELLI



has jurisdiction under 28 U.S.C. § 1295(a).
                             II
    The Patent Act bars issuance of a patent if the appli-
cation is filed more than one year after (1) the product
was sold or offered for sale and (2) the invention is ready
for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67
(1998). A sale for experimental use negates the on-sale
bar. See Del. Valley Floral Grp., Inc. v. Shaw Rose Nets,
LLC, 597 F.3d 1374, 1379 (Fed. Cir. 2010). This court
reviews an “on sale” bar under 35 U.S.C. § 102(b) as a
question of law based on underlying facts. In re Kollar,
286 F.3d 1326, 1329 (Fed. Cir. 2002). This court reviews
the Board’s legal conclusions without deference and
factual findings for substantial evidence. Id.
    According to Mr. Ceccarelli’s first declaration (“First
Declaration”), dated February 28, 2007, Mr. Ceccarelli
told Mr. Lyndon Skogsberg in April 2002 that he needed a
truck chassis to mount his invention “for experimental
testing, development, and revision before [his] company
could take commercial steps with the invention.” J.A. 97.
The First Declaration describes an agreement, memorial-
ized in the April 18, 2002 invoice, in which Mr. Skogsberg
would allow Mr. Ceccarelli to use a truck owned by Mr.
Skogsberg’s company to mount and test the invention.
Mr. Ceccarelli’s First Declaration explained that the
agreement “was not an effort to commercialize the inven-
tion, but was rather necessary to advance the experimen-
tal development of the invention.” J.A. 97.
    Mr. Ceccarelli’s second declaration (“Second Declara-
tion”), dated June 14, 2007, is consistent with the First
Declaration and supports the experimental nature of the
sale. According to this declaration, at the time of the sale
Mr. Ceccarelli had a general idea that required testing.
IN RE CECCARELLI                                          4


Mr. Skogsberg agreed to let him test his idea by mounting
his side puller device on Mr. Skogsberg’s truck.
    The Board explains only that it considered the sale
commercial because “[t]he April 18, 2002 invoice does not
contain any indication that the sale was for experimental
use.” J.A. 13. Mr. Ceccarelli’s First and Second Declara-
tions, however, provide ample evidence that the sale was
experimental, not commercial, in nature. Because the
Board’s finding that the sale was not for experimental use
lacks substantial evidence, this court reverses the Board’s
decision affirming the Examiner’s rejection of claims 1, 2,
5-15, and 17 under 35 U.S.C. § 102(b). Because the sale
was for experimental use, the product sold is not prior art.
See Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1344 (Fed.
Cir. 2007). Therefore, this court reverses the Board’s
decision affirming the Examiner’s rejection of claims 3, 4,
and 16 under 35 U.S.C. § 103(a) as obvious in light of the
product sold and the Ryder patent.
    The dissent suggests that if an inventor perfects an
invention between the date of a sale and the critical date,
then the sale is commercial. The character of a sale,
however, is determined “at the time of the sale.” Electro-
motive Div. of Gen. Motors Corp. v. Transp. Sys. Div. of
Gen. Motors Corp., 417 F.3d 1203, 1210 (Fed. Cir. 2005)
(quoting Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d
1336, 1354 (Fed. Cir. 2002)). If a sale is experimental on
the date of the sale, then reducing the invention to prac-
tice before the critical date is irrelevant—it does not
change the character of the sale.
    The dissent states that if Ceccarelli had delivered the
invention between the date of reduction to practice and
the critical date, then “there would be no dispute that this
constituted an on-sale bar.” Although a sale following a
reduction to practice is necessarily commercial, Zacharin
5                                         IN RE CECCARELLI



v. United States, 213 F.3d 1366, 1369 (Fed. Cir. 2000), the
order in which reduction to practice, delivery, and the
critical date occur does not dictate whether a sale preced-
ing a reduction to practice is commercial or experimental.
See Electromotive, 417 F.3d at 1209-10.
    The question posed by the experimental use doc-
    trine . . . is not whether the invention was under
    development, subject to testing, or otherwise still
    in its experimental stage at the time of the as-
    serted sale. Instead, the question is whether the
    transaction constituting the sale was not inciden-
    tal to the primary purpose of experimentation,
    i.e., whether the primary purpose of the inventor
    at the time of the sale, as determined from an ob-
    jective evaluation of the facts surrounding the
    transaction, was to conduct experimentation.
Id. at 1210 (quoting Allen Eng’g Corp. v. Bartell Indus.,
Inc., 299 F.3d 1336, 1354 (Fed. Cir. 2002)). Thus, a sale
followed by reduction to practice, then delivery, and
finally the critical date does not create a per se commer-
cial sale.
                            III
     Accordingly, this court reverses the Board’s decision
affirming the Examiner’s rejection of claims 1 through 17.
                      REVERSED
        NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
               __________________________

                  (Serial No. 10/843,833)
      IN RE CHARLES CECCARELLI, STEVEN
         DELAPLAIN, AND AARON MARTIN
             __________________________

                       2010-1054
               __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
                __________________________

MOORE, Circuit Judge, dissenting.
    Respectfully, I dissent. The following facts are undis-
puted: 1) the critical date is May 15, 2002; 2) there was an
offer to sell to Country Repairs on April 18, 2002 and an
acceptance of that offer; 3) The invention was reduced to
practice by May 14, 2002; 4) the invention was shown in
public on May 15, 2002; 5) the invention was delivered to
Country Repair, pursuant to the April 18 invoice, on May
23, 2002.
    Based upon these facts, I conclude the on-sale bar ap-
plies. Once an invention is reduced to practice, there is no
further need for experimentation. Here, the inventor
admits that his invention was reduced to practice at least
as early as May 14, 2002. See J.A. 294. Reduction to
practice means an invention has been physically built and
IN RE CECCARELLI                                             2


is known to work for its intended purpose. Slip Track
Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1265 (Fed.
Cir. 2002). The invention in this case was both offered for
sale and reduced to practice prior to the critical date.
Once the invention in this case was reduced to practice,
which it was prior the critical date and prior to its deliv-
ery to Country Repairs, Country Repairs could not be
experimenting on it. The completed invention was deliv-
ered to them ready for use – by the inventor’s own testi-
mony – no further experimentation was necessary after
May 14, 2002. In my opinion, that makes this sale com-
mercial, not experimental in nature. Certainly when an
inventor sells a product to a buyer in order for the buyer
to experiment with it, this sale is experimental, and will
not bar patentability. See EZ Dock v. Schafer Sys., 276
F.3d 1347, 1352-53 (Fed. Cir. 2002). However, when an
inventor offers to sell an invention, which is not yet
reduced to practice, and then reduces it to practice, and
delivers it pursuant to the contract, all prior to the critical
date – this sale creates a bar to patentability. In this
case, the sale has no experimental purpose. The buyer is
not conducting experimentation for the patentee – there is
no experimentation to be done – the invention is reduced
to practice.
    Whether a use is experimental is a question of fact.
See Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d
1253, 1258 (Fed. Cir. 2001). I conclude that the PTO
factfindings are supported by substantial evidence. There
was a contract on April 18. Even if I agreed with the
majority, that there was a need for additional experimen-
tation at the time the invoice was generated, the inventor,
by his own admission, did that experimentation and
perfected the invention prior to the critical date. Hence,
there is a sale of a perfected invention prior to the critical
date – that is sufficient to bar patentability. There is no
3                                          IN RE CECCARELLI



dispute that the tow truck and side puller system were
reduced to practice by May 14, shown May 15, and deliv-
ered pursuant to the invoice to Country Repairs on May
23. If this delivery had occurred on May 14, after the
reduction to practice and one day before the critical date,
there would be no dispute that this constituted an on-sale
bar. I cannot agree that this delay in delivery leads to the
conclusion that the sale was for purposes of experimenta-
tion. To the contrary, I believe the facts in this case,
including the invoice, acceptance, and reduction to prac-
tice, support the PTO’s finding that the sale was commer-
cial in nature and should bar patentability under § 102(b).
Because I conclude the PTO fact findings in this case are
supported by substantial evidence, I would affirm.
