Interference 102,760
conception of a method for treatment of sleep apnea comprising
administration
of a therapeutically effective amount of buspirone to a
patient in need of such treatment itself, i.e., absent
Rosekind’s experimental contribution, constitutes conception
of a patentable invention, i.e., an invention which satisfies
the requirements of 35 U.S.C. § 112, first paragraph. More
specifically, Rapoport has not shown that Claims 1, 2, 6, 7
and 13 of Application 07/695,325 would be patentable to Dement
without Rosekind’s contribution.
Whether or not an applicant reasonably believes that
the invention will in fact work is irrelevant to conception
of an invention. Burroughs Wellcome Co. v. Barr Lab., Inc.,
40 F.3d at 1231, 32 USPQ2d at 1922 (emphasis added):
The question is not whether Burroughs Wellcome
reasonably believed that the inventions would work for
their intended purpose . . . but whether the inventors
had formed the idea of their use for that purpose in
sufficiently final form that only the exercise of
ordinary skill remained to reduce it to practice.
While conception may be the touchstone of inventorship, i.e.,
the completion of the mental part of an invention, and may
show that the inventor had an idea that was definite and
permanent enough that one skilled in the art could understand
the invention, the inventor need not know or even reasonably
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