Interference No. 103,830
successfully in December 1994. The rocket powered, dual wire guided projectile went 75 feet
and was about 4 to 5 inches off perfect track at this distance.
Opinion
Pacholok must prove its case by a preponderance of the evidence where, as here, its
application for patent was co-pending with the involved application of Hutmacher. Davis v.
Reddy, 620 F.2d 885, 888, 205 USPQ 1065, 1068 (CCPA 1980).
We are of the opinion that Pacholok has not established an actual reduction to practice of
the subject matter of either count at any time prior to its filing date.3
Even assuming for the sake of argument that the apparatus and method tested by
Pacholok in his first three tests conducted in December 1992, March 1993, and April through
May 1993 satisfy all the limitations of the counts, they fail to constitute an actual reduction to
practice because the subject matter was not tested sufficiently to ensure that it actually worked
for an intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901
(Fed. Cir. 1998); DSL Dynamic Sciences Ltd. v. Union Switch & Signal, 928 F.2d 1122, 1125,
18 USPQ2d 1152, 1154 (Fed. Cir. 1991). This requirement must be satisfied even when the
intended purpose is not explicitly set forth in a count (here, count 2) of the interference. Koval v.
Bodenschatz, 463 F.2d 442, 447, 174 USPQ 451, 455 (CCPA 1972); Elmore v. Schmitt,
278 F.2d 510, 512-13, 125 USPQ 653, 655, (CCPA 1960); Burns v. Curtis, 172 F.2d 588,
590-91, 80 USPQ 587, 588 (CCPA 1949); Gordon v. Hubbard, 347 F.2d 1001, 1006, 146 USPQ
303, 307 (CCPA 1965). It is clear from Pacholok’s disclosure that his intended purpose was to
disable a pursued vehicle. Such a vehicle would be expected to be traveling at a relatively high
3 We assume, without finding, that the junior party established conception of the subject matter of counts 1 and 2
prior to the senior party’s filing date.
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