opportunity to move to redefine the subject matter of the interference. 37 CFR § 1.633(c). However,
Engvall did not file a preliminary motion to substitute a count directed to the use generically of “high
affinity” monoclonal antibodies rather than the specific minimum affinity specified in the current
count. Engvall’s burden in this interference is to show conception of each express element of the
count as it currently exists. Coleman, 754 F.2d at 359, 224 USPQ at 862; Davis, 620 F.2d at 889,
205 USPQ at 1069.
We conclude that Engvall has not proved conception of the subject matter of the count prior
to August 4, 1980. In our view, the evidence indicates, at best, only a general concern for “high
affinity” antibodies. However, the subject matter of this interference requires a specified minimum
for the affinity constant. Engvall has not proved by even a preponderance of the evidence conception
of an embodiment of monoclonal antibodies having affinities of at least about 10 liters per mole.8
C. Diligence
Engvall asserts diligence from prior to David’s earliest alleged entry into the field, January 4,
1979, until an alleged reduction to practice in October, 1979. Engvall Brief, p. 68. Because we hold
that Engvall has not proved conception, we do not address Engvall’s alleged diligence.
D. Actual reduction to practice
Based on the record before us, we conclude that Engvall has not proved an actual reduction
to practice of an embodiment within the scope of the count.
1. Precedent
An actual reduction to practice requires the existence of a physical embodiment within the
scope of the count. Correge v. Murphy , 705 F.2d 1326, 1329, 217 USPQ 753, 755 (Fed. Cir. 1983);
1 C. Rivise & A. Caesar, Interference Law and Practice § 137 (1940). A party to an interference
must show an appreciation or recognition by the inventor of the invention of the counts to establish
a prior actual reduction to practice. In re Farrenkopf, 713 F.2d 714,720, 219 USPQ 1, 6 (Fed. Cir.
1983); Meitzner v. Corte, 537 F.2d 524, 190 USPQ 407 (CCPA 1976). The embodiment relied upon
for an actual reduction to practice must include every limitation stated in the count. Schendel v.
Curtis, 83 F.3d 1399,1402, 38 USPQ2d 1743, 1746 (Fed. Cir. 1996); Newkirk v. Lulejian, 825 F.2d
1581, 1582-83, 3 USPQ2d 1793, 1794 (Fed. Cir. 1987); Hummer v. Administrator of National
Aeronautics & Space Administration, 500 F.2d 1383, 1387, 183 USPQ 45, 48 (CCPA 1974) (the
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