Interference No. 101,981
1985); Taub v. Rauser, 145 USPQ 497, 49920 (Bd.Pat.Int. 1964). But, here
again, the method of making need only be commensurate with an embodiment of the count.
Conception of the count does not require an appreciation of a process to make an Ortho I
composition. However, parties must possess a process that makes the composition of the count
as we have broadly construed it.
Regarding whether a party must have experimental verification that their composition is
at least 90% orthorhombic YBa2Cu3Ox and has R=0 at 70K or above, we do not see this as a
requirement for establishing conception. While this information can help demonstrate
conception to show that a party had defined their invention, a party is not limited to this sort of
evidence. “[C]onception of a chemical compound requires that the inventor be able to define it so
as to distinguish it from other materials,” Amgen v. Chugai, 927 F.2d 1200, 1206, 18 USPQ2d
1016, 1021 (Fed. Cir.), cert. denied 502 US 856 (1991). Experimental verification is not the only
mode for defining a chemical compound. In some instances, like the one Batlogg (BaB 24,
paragraph 12.) urges with respect to their invention, conception is established when a party has
reduced the invention to practice through a successful experiment; i.e., simultaneous conception
20 “Conception must include, not only a mental possession of the desired end result, in this case a
chemical compound and its use, but the mental possession of an operative process and, if necessary,
of means of carrying the invention out, that is, the preparation of the compound, Alpert v. Slatin, 49
CCPA 1343, 134 USPQ 296, 305 F.2d 891, and Cislak v. Wagner, 42 CCPA 701, 103 USPQ 39,
215 F.2d 275.”
34
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