Patent Interference No. 103,812
practice or it may consist of evidence of surrounding facts and circumstances independent of
information received from the inventor. Reese, 661 F.2d at 1225, 211 USPQ at 940.
Rosenquist's involved U.S. Patent No. 5,523,379 was copending with Scholl's involved
Application 08/438,516. Therefore, in order to be awarded priority in this interference, junior
party Rosenquist must prove, by a preponderance of the evidence, that he actually reduced to
practice an embodiment within the scope of Count 2 prior to May 20, 1994. Bosies v. Benedict,
27 F.3d 539, 541-42, 30 USPQ2d 1862, 1864 (Fed. Cir. 1994). The preponderance of the
evidence standard requires the fact finder "to believe that the existence of a fact is more probable
than its nonexistence before [he] may find in favor of the party who has the burden to persuade
the [judge] of the fact's existence." Bosies, 27 F.3d at 542, 30 USPQ2d at 1864 (citing In re
Winship, 397 U.S. 358, 371-72 (1970)).
Rosenquist argues that an invention within the scope of Rosenquist patent claim 1 was
reduced to practice by February 11, 1994, in three steps. See RB, pp. 1-2. The first step was a
hydrolysis of Tinuvin 840 which is said to have produced a "UV-acid from T840." The
hydrolysis was conducted by Kemuel McDurmon on October 11 through October 14, 1993. The
second step was a polymerization of bis-phenol A with phosgene using the "UV-acid from T840"
to form an endcapped polycarbonate resin. Carroll O. Butler was said to have conducted three
such polymerizations from February 8 through February 10, 1994. The third step was a
molecular weight determination of the three polymerization products produced by Mr. Butler to
establish that the "UV-acid from T840" had indeed functioned as an endcapping agent. James D.
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