NOTE: This disposition is nonprecedential.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 affirmed 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 commercial, 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 accordance 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 application 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, memorialized 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 invention, but was rather necessary to advance the experimental development of the invention.” J.A. 97. 

Mr. Ceccarelli’s second declaration (“Second Declaration”), 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 Declarations, 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.” Electromotive 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 practice 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 preceding a reduction to practice is commercial or experimental. 

See Electromotive, 417 F.3d at 1209-10. 

The question posed by the experimental use doctrine . . . is not whether the invention was under 

development, subject to testing, or otherwise still 

in its experimental stage at the time of the asserted sale. Instead, the question is whether the 

transaction constituting the sale was not incidental 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 objective 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 commercial 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 undisputed: 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 applies. 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 delivery to Country Repairs, Country Repairs could not be 

experimenting on it. The completed invention was delivered to them ready for use – by the inventor’s own testimony – no further experimentation was necessary after 

May 14, 2002. In my opinion, that makes this sale commercial, 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 experimentation 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 delivered 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 experimentation. To the contrary, I believe the facts in this case, 

including the invoice, acceptance, and reduction to practice, support the PTO’s finding that the sale was commercial 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.