Interference No. 102,572
Cabilly et al. as the junior party, whose application was copending with the Boss et
al. patent, bears the burden of proving their case for priority by a preponderance of the
evidence. Bosies v. Benedict, 27 F.3d 539, 541-542, 30 USPQ2d 1862, 1864 (Fed. Cir.
1994); See also Peeler v. Miller, 535 F.2d 647, 651 n.5, 190 USPQ 117, 120 n.5 (CCPA
1976); Linkow v. Linkow, 517 F.2d 1370, 1373, 186 USPQ 223, 225 (CCPA 1975);
Frilette v. Kimberlin, 412 F.2d 1390, 1391, 162 USPQ 148, 149 (CCPA 1969) cert.
denied, 396 U.S. 1002 (1970). See also 37 CFR § 1.657(b)[1995].19
REDUCTION TO PRACTICE
The issue of reduction to practice is a question of law. Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986), cert. denied,
480 U.S. 947 (1987). To establish a reduction to practice of a method count, a party must
show that each step of the method was performed. Szekely v. Metcalf, 455 F.2d 1393,
1396, 173 USPQ 116, 119 (CCPA 1972) . All limitations of the count have to be satisfied.
Id. Such performance may be made by the inventor or someone on his behalf. A party
must show that the method produced the product of the count. Blicke v. Treves, 241 F.2d
718, 720-721, 112 USPQ 472, 475 (CCPA 1957). Where the objective of the process is
to produce a product having particular properties, the product must be tested to show that
it has the desired properties, and that the product is satisfactory for its intended purpose,
1937 CFR § 1.657(b), as now amended, states that: [I]n an interference involving
copending applications or involving a patent and an application having an effective filing
date on or before the date the patent issued, a junior party shall have the burden of
establishing priority by a preponderance of the evidence.
23
Page: Previous 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 Next
Last modified: November 3, 2007