ROSENQUIST v. SCHOLL et al - Page 9




                   Patent Interference No. 103,812                                                                                                                 

                            My initial record of attempting to prepare the "UV acid" from commercially-                                                            
                            available Tinuvin 840, with the stated intention of reacting it with polycarbonate                                                     
                            resin by the extrusion process mentioned above, is on pages 177 to 179 of                                                              
                            notebook MV91-1 dated June 21 and 23, 1992.  The work was then suspended                                                               
                            because another program ("LR2") required a high priority effort.  Almost                                                               
                            immediately upon the conclusion of that program, this work was resumed.                                                                
                            Records are in notebook 92-10 beginning on page 227 (July 9, 1993). [Emphasis                                                          
                            added.]                                                                                                                                
                   Pages 177 to 179 of notebook MV91-1 and the work beginning on page 227 of notebook 92-10                                                        
                   are not of record in this interference.6                                                                                                        
                            Furthermore, the "UV acid" referred to in the invention disclosure letter is not identified.                                           
                   According to the invention disclosure letter (second page of RX 9):                                                                             
                            The invention consists of a new polycarbonate resin composition with some or all                                                       
                            of its end groups consisting of the ester derived from a bisphenol-A in the resin                                                      
                            chain and the the [sic] carboxylic acid group on the the [sic] compound labeled                                                        
                            "UV acid" on the attached page.                                                                                                        
                   The "attached page" was not provided by junior party Rosenquist.                                                                                
                            Second, a party establishing an actual reduction to practice of the subject matter of a                                                
                   count must show a reduction to practice of each and every limitation of the count.  Cooper, 154                                                 
                   F.3d at 1327, 47 USPQ2d at 1901.  There is simply no evidence in the record that junior party                                                   
                   Rosenquist was in possession of an endcapping molecule within the scope of the count prior to                                                   
                   the senior party’s effective filing date.  At best, the evidence of record establishes that Dr.                                                 


                            6In his declaration, Dr. Rosenquist identifies RX 6 as a copy of pages 304 and 305 from                                                
                   his laboratory notebook no. MV 92-10.  See RR, pp. 7-8, paragraphs 9 and 10.  However, RX 6                                                     
                   does not include a copy of the laboratory notebook cover sheet or provide any other indication                                                  
                   that RX 6 is indeed a copy of pages 304 and 305 from laboratory notebook no. MV 92-10.                                                          
                   Compare RX 14 and RX 15.                                                                                                                        

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