Interference No. 102,572
Conception must include every feature or limitation in the count, and every limitation must
have been known to the inventor at the time of the alleged conception. Coleman, 754 F.2d
at 359, 224 USPQ at 862. Conception of an inventive process involves proof of mental
possession of the steps of an operative process and, if necessary, of means to carry it out
to such a degree that nothing remains but routine skill for effectuation thereof. Alpert v.
Slatin, 305 F.2d 891, 894, 134 USPQ 296, 299 (CCPA 1962). Since, conception takes
place in the mind of the inventor, additionally there must be disclosure to and corroboration
by a third party. For it is well settled that the inventor’s testimony standing alone, is
insufficient to prove conception Price, 988 F.2d at 1193-1194, 26 USPQ2d at 1036. In
evaluating whether there is conception, a rule of reason is applied, the rule does not
however dispense with the requirement of some evidence of independent corroboration.
Coleman, 754 F.2d 360, 224 USPQ at 862.
For conception, Cabilly et al. rely upon Riggs’ testimony, on CX-2 and also upon
discussions that Riggs is said to have had with Shively regarding the strategy for bacterial
expression of immunogloblins.
The conception analysis necessarily turns on the inventor’s ability to describe his
invention with particularity. Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d
1223, 1227-1228, 32 USPQ2d 1915, 1919 (Fed. Cir. 1994). Coinventor Riggs, in his
testimony, testified that he formulated a proposal which suggested that a “single bacterial
strain could be constructed which contained both heavy and light chain genes for co-
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