Interference No. 103,635
Prior Actual Reduction to Practice
In the third line of argument (represented by SI314), Scott alleges an actual reduction
to practice in the U.S. on a date prior to Koyama's March 13, 1990 priority date.
According to one authority on the law and practice of interference,15 the following
conditions are essential to establish an actual reduction to practice:
(a). The reduction, like conception, must have taken place in the
United States.
(b). The reduction to practice must have been made by the inventor
himself, or by one authorized to do so either by the inventor or by one
who acquired the inventor's rights to the invention.
(c). The invention must have been embodied in a physical or tangible
form.
(d). The physical embodiment of the invention, which is relied upon as
the reduction to practice, must show every essential feature of the
invention as defined in the count of the interference.
(e). The reduction to practice must demonstrate the practicability or
utility of the invention.
(f). The reduction to practice must have been appreciated by the
inventor at the time it was made.
(g). The fact that the reduction took place must be corroborated in
point of time.
Elements (a) and (c) are implicated here.
Regarding element (a), Scott "recognizes that carrying out a process in a foreign
country without performing the process in the U.S. will not generally suffice to show actual
reduction to practice. Shurie v. Richmond, 699 F.2d 1156, 216 USPQ 1042 (Fed. Cir.
1983)." SB 23. The parties stipulated, pursuant to 37 CFR § 1.672(a), that the Scott
process defined by the Count was reduced to practice in the U.K. prior to March 13, 1990
14 Scott's position is presented in their brief at SB20-23. Koyama (represented by KI1) responded to this line
of argument at KB14-17.
16
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