Interference No. 104,436 Paper98
Shyamala v. Hillman- Page 19
DISCUSSION ...
The senior party benefits from a rebuttable presumption that it was the first to invent.. At'
the final hearing, the junior party bears the ultimate burden of persuasion in overcoming that
presumption. 37 C.F.R. § 1.657(a). The ultimate burden remains with the junior party and does
.not shift with the burden of production. Brown v. Barbaci , 276 F.3d 1327, 1332, 61 USPQ2d
1236, 1239 (Rd. Cir; 2002).
Shyamala's conception of the subject matter of the count
Conception is the formation in the mind of the inventor of a definite and permanent idea
of the complete and operative invention, as it is later applied in practice. Cogl>er v. Goldfarb,
154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed. Cir. 1998). If, as here, the count does not
recite a specific utility, evidence of any utility is sufficient. Cross v. Dzuk 753 F.2d 1040,
1045, 224 USPQ 739, 744 (Fed. Cir. 1985).
For the purposes of this decision, we can assume that all of Shyamala!s facts regarding its
conception of the invention through 14 June 1996 are true. Shyamala has not, however, pointed
us to evidence showing that even as of the putative date of ShyamaWs actual reduction to
practice, the inventor had a specific, concrete application for the MIP protein in mind, much less
a definite and permanent idea of how it would be used in practice. Rather, the evidence is
consistent with a research program to elucidate the function of a protein associated with a cellular
signaling pathway of great interest. We see no evidence that Shyamala had any application in
mind as of the putative date of conception.
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