Interference No. 104,745
order to prove the apparatus's suitability for that purpose. It is sufficient if the tests demonstrated
the capability of the AP-MALDI apparatus to generate and transport sufficient analyte ions to
such a mass spectrometer. See DSL, 928 F.2d at 1125, 18 USPQ2d at 1154 ("tests performed
outside the intended environment can be sufficient to show reduction to practice if the testing
conditions are sufficiently similar to those of the intended environment. Tomecek v. Stimpson,
513 F.2d 614, 618, 185 USPQ 235, 239 (CCPA 1975)."). The fact that Bai's 23 December test
did not yield a mass spectrum of the analyte material therefore is not dispositive, as Laiko
contends.
Turning now to the evidence, Fischer testified that
[b]ecause the matrix signal acquired on December 19, 1997 was relatively weak,
we wanted to collect the data in a mode that would maximize the sensitivity and
confirm that [the] signal generated from a matrix-analyte mixture was the analyte
and not an artifact or background. Thus, we needed software that could collect
data at a rate faster than 20 Hz.
Fischer Decl. (BX 204) ¶ 46.22 Erik Reinecke, a coworker in HP's research and development
organization who at that time was primarily responsible for the internal hardware and software
support for over forty LC and GC (gas chromatography) systems, was approached for a solution.
Id.; Reinecke Decl. (BX 2042) ¶¶ 2, 8. Reinecke explained that
22 The inventors' testimony and exhibits relied on as proof of the alleged 23 December 1997
actual reduction to practice are not challenged by Laiko as lacking the necessary corroboration.
See Brown v. Barbacid, 276 F.3d 1327, 1335, 61 USPQ2d 1236, 1240 (Fed. Cir. 2002)
("[I]ndependent evidence (evidence or physical evidence from a source other than [inventor] Dr.
Reiss) must corroborate Dr. Reiss' testimony to show an actual reduction to practice.").
However, the testimony and exhibits relating to the alleged 20 January 1998 actual reduction to
practice are challenged on that ground.
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