Interference No. 101,981
experimentation would be required to construct it. We need not
seek out elements of the composition which are not recited in the
count. Ortho I, which Qadri argues in favor of, is not required
by the composition of the count and therefore we need not
determine if extensive experimentation would be required to
construct it. On the other hand, Qadri might establish
conception of the count through their conception of the Ortho I
structure because “conception of a species within a genus may
constitute conception of the genus,” Oka v. Youssefyeh, 849 F.2d
581, 583,
7 USPQ2d 1169, 1171 (Fed. Cir. 1988). Either way, at the very
least, the count requires a composition of the formula AB 2Cu3Oy.
Parties must show conception of this formula and explain how this
can be constructed without extensive experimentation. At a
minimum, conception must be shown for a composition that is at
least 90% orthorhombic YBa2Cu3Oy and has electrical resistance (R)
R=0 at 70K or above.
Furthermore, as Qadri indicates, conception requires
possession of an operative method of making the invention.
Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir.
33
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