Interference No. 103,345
abandonment, suppression, or concealment would bar Staples
from relying on the date of an actual reduction to practice
date as his conception date, Roberge's argument fails because,
as explained below, he has not established that either of
these two models constituted an actual reduction to practice.
For purposes of this discussion we assume that, as Jeffrey
Staples testified, the first model was constructed in January21
1980 in accordance with the December 2, 1979, drawing and that
the second model employed a worm gear mechanism. We also
assume that Roberge is correct to assert that a reduction to
practice of the palatal expander of the count does not require
testing in a patient's mouth. To prove that the first model22
satisfies all of the limitations of the count, as is necessary
for this model to constitute an actual reduction to practice
Supp. Aff., SR 4-5, paras. 2-3.21
Roberge contends testing was unnecessary because the22
operability of the models was readily apparent from an inspection
of the models, citing In re Asahi/America Inc., 68 F.3d 442, 445,
37 USPQ2d 1204, 1206 (Fed. Cir. 1995), which in discussing the
elements of an actual reduction to practice under 37 CFR § 1.131
held that "[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)). Staples argues that an actual
reduction to practice did not occur, because testing was required
but not performed.
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