41 USPQ2d at 1689; Coleman, 754 F.2d at 359, 224 USPQ at 862; Davis, 620 F.2d at 889, 205
USPQ at 1069; Schur, 372 F.2d at 551, 152 USPQ at 609.
Engvall relies on Vancil v. Arata, 202 USPQ 58, 60 (Bd. Pat. Int. 1977) to support the
position that conception of “high affinity” is enough. In Vancil a panel of the former Board of Patent
Interferences stated:
Arata contends that Vancil has not established conception of the
subject matter in issue because there is no evidence of conception of
a collision sensor, which is one element recited in the counts.
However, the law does not require that every element of the counts
be conceived; rather, the test of conception is whether the disclosure
by the inventor(s) was such that no extensive research or
experimentation would be required for one of ordinary skill in the art
to construct the invention in issue based upon that disclosure.
Summers v. Vogel, 332 F.2d 810, 141 USPQ 816 (CCPA 1964); In
re Tansel, 253 F.2d 241, 117 USPQ 188 (CCPA 1958); Mergenthaler
v. Scudder, 11 App. D.C. 264, 276, 1897 C.D. 724, 731.
Vancil is not persuasive for two reasons. First, it does not appear to be binding precedent of
this board. Second, and more importantly, it is inconsistent with the standard for proof of conception
as set forth in binding precedent of the Federal Circuit and the former Court of Customs Patent
Appeals. It is now well settled that conception requires proof of possession of every express
limitation of the count. Kridl, 105 F.3d at 1449, 41 USPQ2d at 1689; Coleman, 754 F.2d at 359, 224
USPQ at 862; Davis, 620 F.2d at 889, 205 USPQ at 1069; Schur, 372 F.2d at 557, 152 USPQ at
609.
Engvall urges that to prove conception an inventor does not have to conceive the exact
language of the count. Engvall relies on Silvestri v. Grant, 496 F.2d 593, 181 USPQ 706 (CCPA
1974) to support this argument and urges that the idea of the use of “high affinity” monoclonal
antibodies is close enough for conception “of at least about 10 liters/mole.” Engvall Brief, p. 77-78.8
In particular, Engvall relies on the following portion of Silvestri:
This standard does not require that Silvestri establish that he
recognized the invention in the same terms as those recited in the
count. The invention is not the language of the count but the subject
matter thereby defined. Silvestri must establish that he recognized and
appreciated as a new form, a compound corresponding to the
compound defined by the count. [Emphasis added.]
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