Interference No. 103,169
Conception of an inventive process involves proof of mental possession of the steps of an
operative process and, if necessary, of a means to carry it out to such a degree that
nothing remains but routine skill for effectuation thereof. Alpert v. Slatin, 305 F.2d at 894,
134 USPQ at 299. 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 an
inventor’s testimony standing alone, is insufficient to prove conception. Price v. Symsek,
988 F.2d 1187, 1193-1194, 26 USPQ2d 1031, 1036 (Fed. Cir. 1993). In evaluating
whether there is conception, a rule of reason is applied; the rule does not, however,
dispense with the requirement of providing some evidence of independent corroboration.
Coleman, 754 F.2d at 360, 224 USPQ at 862. 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 USPQ 2d 1915, 1919 (Fed.
Cir. 1994).
Chenevey et al. case for conception
For conception, Chenevey et al. state in their brief:
A full description of Chenevey’s conception of the invention was reduced
to writing, as a proposal in response to the PRDA, by no later than January
23, 1983. This written proposal specified each step of the process stated in
the Count, and focused on imparting biaxial orientation by conical mandrel
expansion (which Chenevey et al. had already successfully performed), and
by blown film expansion of film extruded from an annular die, as disclosed in
both specifications at issue here. Most importantly, Chenevey Exhibit 1
(page 9) specifies ?film” that is ?formed directly from the PPA polymerization
solution” (mixture) has been ?demonstrated” to be “equivalent or superior” to
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