Interference 102,760
one of claims 1-13 of the Dement application as of its date of
original presentation.
The Court in Ethicon Inc. v. U.S. Surgical Corp., 135
F.3d 1456, 1460, 45 USPQ2d 1545, 1548 (Fed. Cir. 1998),
explains conception of a joint invention as follows:
A patented invention may be the work of two
or more joint inventors. See 35 U.S.C. § 116
(1994). Because "[c]onception is the touchstone
of inventorship," each joint inventor must
generally contribute to the conception of the
invention. . . .
[F]or the conception of a joint invention,
each of the joint inventors need not "make the
same type or amount of contribution" to the
invention. 35 U.S.C. § 116. Rather, each needs
to perform only a part of the task which
produces the invention. . . .
Furthermore, a co-inventor need not make a
contribution to every claim of a patent. See 35
U.S.C. § 116. A contribution to one claim is
enough. . . . Thus, the critical question for
joint conception is who conceived, as that term
is used in the patent law, the subject matter of
the claims at issue.
The record establishes that both Schwimmer and Rosekind
conceived of specific dosages, 60 milligrams, preferably 40
milligrams, and 20 milligrams, respectively, of buspirone to
be administered to patients for the treatment of sleep apnea.
These dosages fall within the broad scope of the claimed
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