Interference 102,760
856 (1991); In re Vaeck, 947 F.2d at 496, 20 USPQ at
1445.
The Patent and Trademark Office Board of Appeals stated
in Ex parte Jackson, 217 USPQ 804, 807 (Bd. Pat. App. & Int.
1982) (emphasis added):
The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
reasonable amount of guidance with respect to the
direction
in which the experimentation should proceed to enable the
determination of how to practice a desired embodiment of
the invention claimed.
Just as Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d
at 1229, 32 USPQ2d at 1920, teaches that “these cases do not
stand for the proposition that an inventor can never conceive
an invention in an unpredictable or experimental field until
reduction to practice,” the cases similarly do not stand for
the proposition that conception itself is always sufficient to
enable one skilled in the art to make and use the full scope
of the claimed invention in an unpredictable or experimental
field. One must examine the evidence in each case.
Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d at
1229, 32 USPQ2d at 1921, made clear (emphasis added):
We . . . do not hold that a person is precluded from
being a joint inventor simply because his contribution
to a collaborative effort is experimental. Instead, the
qualitative contribution of each collaborator is the key
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