CAVANAGH V. MCMAHON et al. - Page 11




          Interference No. 102,668                                                    


          is required to establish the invention's operability for its                
          intended purpose.17                                                         
                    Packard, the only witness who claims to have seen a               
          test of a transducer that allegedly satisfies the count,                    
          testified as follows (CR  4-5):18                                                  
                         2.  To the best of my recollection, during the               
                    month of August, 1988, I witnessed the operation of               
                    [sic, a] transducer design prototype invented by Mr.              
                    George H. Cavanagh III as described in Exhibits "A",              
                    "B", "D" in the §1.608(b) Declaration filed by Mr.                
                    Cavanagh, dated 9/19/90 [CR 2-3].                                 
                         3.  This device was tested in my presence at the             
                    Hazeltine facility known as "the quarry".  The test               
                    results obtained during August, 1988 are shown in                 
                    Exhibit "C" of the above-referenced declaration.                  
                    Further, I signed Mr. Cavanagh's Engineering note                 
                    book, pages 12548-3 & 12548-31, marked Exhibits "E"               
                    and "F" respectively, copies attached hereto,                     
                    confirming that I had witnessed successful operation              
                    of the above-referenced invention during August,                  
                    1988.                                                             




            Cavanagh does not contend that the operability of the17                                                                     
          invention is ascertainable from mere inspection of an embodiment            
          of the invention, as is necessary to avoid the need for testing.            
          Compare In re Asahi/America, Inc., 68 F.3d 442, 445, 37 USPQ2d              
          1204, 1206 (Fed. Cir. 1995) ("[t]here are some devices so simple            
          that a mere construction of them is all that is necessary to                
          constitute a reduction to practice") (quoting Sachs v. Wadsworth,           
          48 F.2d 928, 929, 9 USPQ 252, 253 (CCPA 1931)).                             
           Cavanagh Record.18                                                                     
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