Christopher Ihara

Patent Trials and Appeals Board

Aug 20, 2020

2020001617 (P.T.A.B. Aug. 20, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/959,987 12/04/2015 Christopher J. Ihara GDCJI01A 2536
33076 7590 08/20/2020
Dobbin IP Law, P.C.
Attn: Geoffrey E. Dobbin
2250 S Redwood Road, Ste 5
West Valley City, UT 84119-1355
EXAMINER
BULLINGTON, ROBERT P
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/20/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
geoff@dobbiniplaw.com
shaylyn@dobbiniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER J. IHARA
____________

Appeal 2020-001617
Application 14/959,9871
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–12. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Christopher J. Ihara. (Appeal Br. 3.)
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to the field of training equipment and
more particularly relates to a selection system whereby drivers are trained to
make split-second choices as to operation and direction of a vehicle.”
(Spec. 1, ll. 10–12.)
Claims 1 and 9 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A driving training system comprising:
a. a plurality of lane indicator signals positioned at a single
intersection, the intersection comprising at least one entry lane
and a plurality of exit lanes with each of the plurality of lane
indicator signals being positioned over an exit lane while being
viewable from the entry lane;
b. a control unit in operable communication with the lane
indicator signals;
c. at least one speed sensor, in operable communication
with the control unit;
d. at least one position sensor in operable communication
with the control unit;
wherein the at least one lane indicator signals are positioned in a
manner to present a simulated driving experience in a test area,
the at least one position sensor is positioned to record a position
of a vehicle as it enters the test area, the at least one speed sensor
records a speed of the vehicle as it enters the test area and the
control unit activates the lane indicator lights in a manner to give
a pre-determined reaction time, according to the simulated
driving experience.

REJECTIONS
Claims 1–12 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
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Claims 1–12 are rejected under 35 U.S.C. § 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor regards as the invention.
Claims 1–9 and 12 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Golenski (US 3,991,485, iss. Nov. 16, 1976).
Claims 10 and 11 are rejected under 35 U.S.C. § 103 as unpatentable
in view of Golenski.
Claims 1–12 are rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Appellant’s admitted prior art.

ANALYSIS
The § 112(a) and § 112(b) rejections
Appellant does not appeal these rejections. (See Appeal Br. 4.)
Therefore, we summarily affirm these rejections.

The § 102(a)(1) and § 103 rejections in view of Golenski
Appellant does not appeal these rejections. (See id.) Therefore, we
summarily affirm these rejections.

The § 102(a)(1) rejection in view of Appellant’s admitted prior art
On July 5, 2018, Appellant filed an Information Disclosure Statement
that disclosed, in relevant part:
After filing the Application, Applicant realized the
potential import that two prototype systems, which were sent to
two different entities, might have on this Application. In both
circumstances, the prototypes were “sold” at the basic cost for
parts in exchange for information regarding the performance of
the prototypes in extreme environmental conditions so that
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production models could be perfected. The basic facts are
outlined below.
1. One unit was sent to the Gilroy Police Force in
Gilroy, California, in 2013. The purpose of sending
the prototype to this location was to evaluate its
performance under the extremely high RF traffic in
the region as well as particularly prevalent
inclement weather. It should be noted that there was
an initial test of the system at Gilroy, CA before this
time where the prototype had totally failed to
perform due to the extreme enviornment [sic].
2. The second unit was delivered to Peele Police
Department in Ontario, Canada, on November 27,
2013. The purpose of sending the prototype to this
location was to evaluate performance and storage
under cold-weather conditions.

(Information Disclosure Statement filed July 5, 2018, as part of Response to
Non-final Office Action and Amendment, at 7 (hereinafter “IDS”).)
The Examiner finds that “[a]s best understood, claim [sic] 1-12 are
disclosed by Applicant [sic] admitted prior art in Applicants [sic] IDS
submitted on 7/5/2018.” (Final Action 5.) Based on the IDS, the Examiner
finds that “Applicant’s invention was sold on November 27, 2013, prior to
the one year grace period of December 4, 2013, as it applies to the
provisional application filed on December 4, 2014 and subsequent utility
application filed on December 4, 2015.” (Id. at 5–6.)
Appellant argues that the sale to the Peele Police Department “falls
under the experimental use exception, regardless of the private final
transaction between parties to cover construction costs of the invention.”
(Appeal Br. 6.) The Appeal Brief includes an Evidence Appendix
containing several purported emails between Appellant and the Peele Police
Department. (Appeal Br. 15–34 (Exhibits A–F).)
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As an initial matter, we note that on September 4, 2019, Appellant
submitted several “emails in support of his contention that the exchange of
the product embodying the invention in [sic] November 27th, 2013 was not a
sale for purposes of § 102.” (Exhibits for Appeal filed September 4, 2019
at 1 (hereinafter “Exhibits”).) A declaration attesting to the authenticity of
the emails was included. (Exhibits at 2.) The emails attached to Exhibits
are marked “XX2001–XX2048.” (See Exhibits.)2
Appellant’s Notice of Appeal was filed April 5, 2019.
37 C.F.R. § 41.33 recites:
(d)(1) An affidavit or other Evidence filed after the date of
filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior
to the date of filing a brief pursuant to § 41.37 may be admitted
if the examiner determines that the affidavit or other Evidence
overcomes all rejections under appeal and that a showing of good
and sufficient reasons why the affidavit or other Evidence is
necessary and was not earlier presented has been made.
(2) All other affidavits or other Evidence filed after the
date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3)
will not be admitted except as permitted by §§ 41.39(b)(1),
41.50(a)(2)(i), and 41.50(b)(1).

The Examiner did not determine that the evidence overcame all
rejections under appeal. Therefore, § 41.33(d)(1) does not apply in this
instance. With regard to § 41.33(d)(2), the exceptions recited in
§§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1) also do not apply in this
instance. Therefore, under § 41.33(d)(2), the evidence filed on

2 The documents attached to the Appeal Brief as Exhibits A–F are marked
as, e.g., “Email 2021,” “Email 2022,” etc. However these documents are not
the same documents as included in the Exhibits, nor is there a declaration
attesting to the authenticity of the documents marked as Exhibits A–F.
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September 4, 2019, nearly 5 months after the date of filing the appeal, will
not be admitted.3 We are, however, left with Appellant’s apparent
admission that “Appellant’s ‘sale’ to the Peele Police Department” (Appeal
Br. 7) on November 27, 2013, was “of the product embodying the invention”
(Exhibits 1).
Appellant argues that the “‘sale’ to the Peele Police Department . . .
was primarily for the purpose of sending the prototype to a location with
cold weather conditions to evaluate the systems [sic] performance under low
temperatures, as well as the system’s ability to survive storage in cold
climates” (Appeal Br. 7), i.e., that the sale “falls under the experimental use
exception” (id. at 6).
[T]he on-sale bar applies when two conditions are satisfied
before the critical date. First, the product must be the subject of
a commercial offer for sale. . . .
Second, the invention must be ready for patenting. That
condition may be satisfied in at least two ways: by proof of
reduction to practice before the critical date; or by proof that
prior to the critical date the inventor had prepared drawings or
other descriptions of the invention that were sufficiently specific
to enable a person skilled in the art to practice the invention.

Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67–68 (1998).
Proof of experimental use serves “as a negation of the statutory
bars.” EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1352 (Fed.
Cir. 2002). A use may be experimental if its purpose is: “(1) [to]
test claimed features of the invention or (2) to determine whether
an invention will work for its intended purpose—itself a

3 Unlike, e.g., §§ 41.37 and 41.41, § 41.33 includes no provision for
extensions of time to file affidavits or other evidence.
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requirement of patentability.” Clock Spring, L.P. v. Wrapmaster,
Inc., 560 F.3d 1317, 1327 (Fed. Cir. 2009).

Polara Eng’g Inc. v. Campbell Co., 894 F.3d 1339, 1348 (Fed. Cir. 2018).
“However, experimentation conducted to determine whether the invention
would suit a particular customer’s purposes does not fall within the
experimental use exception. Allen Eng’g [Corp. v. Bartell Indus., Inc., 299
F.3d 1336, 1355 (Fed. Cir. 2002)] (citing In re Theis, 610 F.2d 786, 792
(CCPA 1979)).” Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d
1361, 1366 (Fed. Cir. 1995). Furthermore,
“[t]esting or experimentation performed with respect to non-
claimed features of the device does not show that
the invention was the subject of experimentation.” W. Marine
Elecs., Inc. v. Furuno Elec. Co., 764 F.2d 840, 847
(Fed.Cir.1985). In other words, an experimental use only
negates a statutory bar when the inventor was testing claimed
features of the invention. In re Theis, 610 F.2d 786, 793 (CCPA
1979) (“It is settled law that ... [an] experimental sale ... does not
apply to experiments performed with respect to non-claimed
features of an invention.”); LaBounty Mfg. Inc. v. U.S. Int’l Trade
Comm’n., 958 F.2d 1066, 1074 (Fed.Cir.1992); In re Brigance,
792 F.2d 1103, 1109 (Fed.Cir.1986).

SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306, 1317–18 (Fed.
Cir. 2004). For example, in Polara Engineering, “Polara contend[ed] that it
was testing claimed features, i.e., the ‘digital data signals’ limitation.”
Polara Eng’g Inc., 894 F.3d at 1349.
Here, Appellant argues that the system sold to the Peele Police
Department was for purposes of cold weather testing and storage. (Appeal
Br. 7, 9.) Appellant does not point to any particular claim limitation(s), i.e.,
Appellant does not indicate what claimed features were being tested.
Moreover, Appellant’s argument indicates that the experimentation was to
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determine whether the invention would suit the purposes of the Peele Police
Department or, more generally, the purposes of customer’s in cold climates.
Therefore, we do not find Appellant’s argument persuasive.4
Additionally, the Federal Circuit has identified a number of factors to
be considered in assessing whether a use is experimental:
(1) the necessity for public testing, (2) the amount of control over
the experiment retained by the inventor, (3) the nature of the
invention, (4) the length of the test period, (5) whether payment
was made, (6) whether there was a secrecy obligation, (7)
whether records of the experiment were kept, (8) who conducted
the experiment, (9) the degree of commercial exploitation during
testing, (10) whether the invention reasonably requires
evaluation under actual conditions of use, (11) whether testing
was systematically performed, (12) whether the inventor
continually monitored the invention during testing, and (13) the
nature of contacts made with potential customers.

Id. at 1348–49 (quoting Clock Spring, L.P., 560 F.3d at 1327 (internal
quotation marks and citations omitted)).
The Examiner finds that
[r]egarding factor (6), a Non-disclosure agreement(s) neither
exists nor was/were never [sic] provided as evidence of a secrecy
obligation. Regarding factor (7), records of the
“experimentation” were never kept, nor provided as evidence.

4 In the Reply Brief, Appellant argues, for the first time in this appeal, that
an update completed in July 2014 “is what has enabled the Inventor to claim
the methodology in claims 9-12 and the use described in claim 1.” (Reply
Br. 3.) We do not find this persuasive. Appellant does not indicate to which
claim limitation(s) this argument applies, and it relies on evidence not
properly before us. This argument was not raised in the Appeal Brief, is not
responsive to an argument raised in the Answer, and Appellant has not
shown good cause for why we should consider this late argument. See
37 C.F.R. § 41.41(b)(2).
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Regarding factor (8), it is not clear who specifically performed
the “experimentation.” Nor are any names recorded indicating
otherwise. Regarding factor (11), it is not clear what testing is
being performed and if it was done in a systematic manner.

(Answer 13.)5
Appellant addresses these 13 factors arguing, e.g., with regard to
factor 6, that “Appellant and the Peele Police Department had a
confidentiality obligation, the testing occurred at a facility closed to the
public, and employees involved in testing were required to keep the
information regarding the system and testing confidential.” (Appeal Br. 9.)
Appellant, however, points to nothing in the record to support this argument.
Indeed, page 9 of the Appeal Brief presents arguments regarding all 13
factors. But Appellant includes no citations to the record (or to the Exhibits)
in support of any of these arguments. (See id.)6
In view of the above, we are not persuaded of error.

5 The Examiner appears to have taken the Exhibits into consideration in
making additional findings regarding some of the other factors, e.g., “with
regard to factor (2), it is implied that the inventor had no control over the
experiment, per the statement in ‘Exhibit B - Email 2012’” and “[r]egarding
factor (12), it is reasonably implied that the inventor did not continually
monitor the invention during testing, per the statement in ‘Exhibit B - Email
2012’ . . . and as found in ‘Exhibit D - Email 2002.’” (Answer 13–14.)
However, for the reasons discussed above, we do not consider the Exhibits
as having properly been admitted. Therefore, we do not consider the
Exhibits or the Examiner’s findings based on the Exhibits.
6 The IDS states that “[b]oth locations kept the prototypes in confidence.”
(IDS 7.) But neither the IDS nor the Appeal Brief point to any
confidentiality obligation or requirement. (See Appeal Br. 9.)
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CONCLUSION
The Examiner’s rejection of claims 1–12 under 35 U.S.C. § 112(a) is
summarily affirmed.
The Examiner’s rejection of claims 1–12 under 35 U.S.C. § 112(b) is
summarily affirmed.
The Examiner’s rejection of claims 1–9 and 12 under 35 U.S.C.
§ 102(a)(1) as anticipated by Golenski is summarily affirmed.
The Examiner’s rejection of claims 10 and 11 under 35 U.S.C. § 103
as unpatentable in view of Golenski is summarily affirmed.
The Examiner’s rejection of claims 1–12 under 35 U.S.C. § 102(a)(1)
as anticipated by Appellant’s admitted prior art is affirmed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12 112(a) Written Description 1–12
1–12 112(b) Indefiniteness 1–12
1–9, 12 102(a)(1) Golenski 1–9, 12
10, 11 103 Golenski 10, 11
1–12 102(a)(1) Appellant’s Admitted
Prior Art
1–12
Overall
Outcome
1–12

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED