Interference 102,760
07/695,325 must be unpatentable under 35 U.S.C. § 102(f)
because one of the joint inventors, Rosekind, only contributed
experimentation to reduce an embodiment within the scope of
the claimed invention to practice, because Pro-Mold & Tool Co.
v. Great Lakes Plastics, Inc., 75 F.3d at 1575, 37 USPQ2d at
1632, states, “To be a joint inventor, one must contribute to
the conception of an invention.” Where, as here,
unpatentability of a claimed invention under
35 U.S.C. § 102(f) is at issue, we interpret the above-quoted
statement in Pro-Mold & Tool Co. to mean that each of the
joint inventors must contribute to conception of a patentable
invention claimed.
Conception alone may constitute a patentable invention if
the invention conceived satisfies 35 U.S.C. § 112. However,
“one need not necessarily meet the enablement standard of 35
U.S.C.
§ 112 to prove conception.” Burroughs Wellcome Co. v. Barr
Lab., Inc., 40 F.3d 1223, 1231, 32 USPQ2d 1915, 1922 (Fed.
Cir. 1994). Accordingly, while Dement’s conception of an
invention encompassed by the interference count may be
sufficient to establish priority as to the invention defined
by an interference count, Rapoport has not shown that Dement’s
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