Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 12
Finne 34 F.3d 1058,1061-62,32 USPQ2d 1115,1118 (Fed. Cir. 1994); Holmwoodv.
Sugavanam, 948 F.2d 1236, 1238, 20 USPQ2d 1712, 1714 (Fed. Cir. 1991). Further,
"the standard of proof required to corroborate a reduction to practice, [is] a more
stringent standard than that required to corroborate a conception." Singh v. Brake, 222
F.3d 1362, 1369, 55 USPQ2d 1673, 1678 (Fed. Cir. 2000). See Mikus v. Wachtel, 542
F.2d 1157, 1161, 191 USPQ 571, 575 (CCPA 1976) (holding that an invention record,
based on an unwitnessed laboratory notebook and results performed by technicians
unaware of what they were testing, may provide sufficient evidence of conception but
not reduction to practice under the rule of reason).
1. Insufficient corrobation of Nichols' alleged actual reduction to
practice
Nichols contends that an experiment begun on (a) April 11, 1994 led to the first
corroborated synthesis of a 4-urea derivative within the scope of the Count, i.e., (NN
diethyl)-4-ureido-5,7-dichloro-2-carboxyquinoline methyl ester (NB, p. 33, last $).
Nichols further contends that the syntheses begun on (b) May 3, 1994, (c) July 1, 1994
and (d) July 13, 1994 all show actual reductions to practice before the June 6, 1997
constructive filing date of Tabakoff (NB, pp. 34-41).
13. At the outset we note that all of the copies of the laboratory notebook pages
relied on by Nichols to document Dr. Nichols' synthetic activity, i.e., Exs 2017-2022,
2024, 2030, 2032, 2041-2047, 2049, 2052 and 2072, consist of unsigned and
unwitnessed handwritten entries.
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