Silvestri, 496 F.2d at 599, 181 USPQ at 710.
In Silvestri, the board had held that Silvestri had not proved either conception or reduction
to practice before the critical date. The count in Silvestri was directed to a specific chemical
compound --a new form of ampicillin (Form II). The court stated:
The ampicillin of the count is a new form of an otherwise old
composition. It is now well settled that in such a case there is no
conception or reduction to practice where there has been no
recognition or appreciation of the existence of the new form.
Silvestri, 496 F.2d at 593, 181 USPQ at 708. After summarizing prior cases, the court set out the
issue before it:
The effect of these cases is that an inventor of a new form of an old
composition cannot be accorded a date of invention earlier than the
date when he recognizes the existence of the new form. Accordingly,
the principal issue before us now is whether the evidence establishes
beyond a reasonable doubt that, prior to Grant's filing date, Silvestri
not only actually prepared Form II, but also appreciated that a new
form of ampicillin had been obtained.
Silvestri, 496 F.2d at 597, 181 USPQ at 709. The court concluded that Silvestri proved conception
and reduction to practice notwithstanding the fact that some of the express limitations of the count
were not proved. The court stated:
We believe that the results of the water assays and infrared analyses
establish beyond a reasonable doubt that Silvestri had actually
prepared a form of ampicillin corresponding to that obtained by Grant
and thus to the count. In reaching this conclusion, we do not
disregard the fact that the count also requires that the ampicillin
possesses greater storage-stability than hydrated ampicillin and have
a molecular weight of about 349. However, we regard these as
inherent properties of Form II ampicillin which add nothing to the
count definition beyond that determined by the water content and
infrared spectrograph. In our view, these latter properties are
sufficient to fully identify the new form of ampicillin. [Footnotes and
citations omitted.]
Silvestri, 496 F.2d at 599, 181 USPQ at 709.
The Court concluded conception and reduction to practice existed because Silvestri
demonstrated he (1) had actually made the specific ampicillin compound that was the subject matter
of the count, and (2) contemporaneously recognized that the compound obtained was a new form of
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