Interference No. 103,836
Beam can establish no date of conception prior to May 31, 1992. This is because Beam’s
preliminary statement sets forth that the invention was first conceived on an unknown date
during 1992 prior to June 1, 1992. 37 CFR § 1.629(b). Further, Beam’s preliminary statement
sets forth actual reduction to practice during the first week of January 1993. Whereas Chase has
established a date of conception of May 25, 1992 and has a constructive reduction to practice of
June 25, 1992, the party Chase is entitled to prevail as the first to conceive the invention and the
first to reduce it to practice.5
Chase’s Motions to Suppress
The motions of Chase filed April 27, 2000 to suppress BX-9 and BX-10, and BX-23
through 29 are dismissed as moot because none of the exhibits are relied on by the Board in its
decision.
Patentability of Beam’s Claims
Whereas Chase is entitled to prevail herein as the first to invent, the question of whether
Beam’s involved claims are unpatentable under 35 U.S.C. § 102/103 over Chases’s ‘906 patent
is dismissed as moot.
Summary of Major Issues
Beam’s motion to amend its preliminary statement is denied.
Beam’s position that Chase’s involved claims are unpatentable to Chase under 35 U.S.C.
§ 112, first paragraph, is unpersuasive on the merits.
5 Even if Beam were entitled to a date of conception prior to Chase, Beam could not prevail herein as the first to
conceive who was reasonably diligent from a time prior to conception by Chase (35 U.S.C. § 102(g)) because
Beam’s case concerning diligence is general in nature and has little specificity as to dates and facts. Kendall v.
Searles, 173 F.2d 986, 992-93, 81 USPQ 363, 368-69 (CCPA 1949). Beam’s brief at pages 9 and 10 concerning its
diligence is a reflection of this fact.
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