application was not copending with David’s application. However, the involved application is said
to be a continuation of an earlier application filed on July 21, 1981. But when the interference was
declared, the APJ did not give Engvall the benefit of the parent application. Paper 1. Engvall’s
preliminary motion for benefit was denied (Paper 77, p. 6) and Engvall has not requested review of
that ruling at final hearing. 37 CFR § 1.655. Accordingly, the relevant standard in this case is clear
and convincing evidence. However, we conclude that Engvall has not proved priority even by the less
stringent standard of preponderance of the evidence.
B. Conception
1. Precedent
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 therefore to be applied in practice." Kridl v.
McCormick, 105 F.3d 1446, 1449, 41 USPQ2d 1686, 1689 (Fed. Cir. 1997); Mahurkar v. C.R. Bard
Inc., 79 F.3d 1572, 1577, 38 USPQ2d 1288, 1290-91 (Fed. Cir. 1996) Burroughs Wellcome Co. v.
Barr Labs., Inc. , 40 F.3d 1223, 1228, 32 USPQ2d 1915, 1919 (Fed. Cir. 1994), cert. denied, 116
S. Ct. 771 (1996); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985);
Gunter v. Stream, 573 F.2d 77, 80, 197 USPQ 482, 484 (CCPA 1978). The idea must be "so
clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the
invention to practice, without extensive research or experimentation." Mahurkar, 79 F.3d at 1597,
38 USPQ2d at 129; Burroughs; 40 F.3d at 1228, 32 USPQ2d at 1919 . A conception must include
every feature or limitation of the count. Kridl, 105 F.3d at 1449, 41 USPQ2d at 1689. Thus, in order
to establish conception, a party must show possession of every feature stated in the count, and that
every limitation of the count must have been known to the inventor at the time of the alleged
conception. Coleman, 754 F.2d at 359, 224 USPQ at 862; Davis v Reddy , 620 F.2d 885, 889, 205
USPQ 1065, 1069 (CCPA 1980). Each express limitation of the count is considered material and
cannot be disregarded. Schur v. Muller, 372 F.2d 546, 551, 152 USPQ 605, 609 (CCPA 1967). In
addition, “[i]t is well-settled that conception and reduction to practice cannot be established nunc pro
tunc. There must be contemporaneous recognition and appreciation of the invention represented by
the counts.” (Emphasis original.) Estee Lauder Inc., v. L'Oreal, S.A., 129 F.3d 588, 593-94, 44
40
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