Appeal No. 1998-2848
Application 08/398,862
the count [was] known to the inventor at the time of the
alleged conception.' Coleman v. Dines, 754 F.2d 353, 359,
224 USPQ 857, 862 (Fed. Cir. 1985) (emphasis added).").
The Examiner states (Paper No. 10, pages 2-3):
The evidence is insufficient to establish a
conception of the invention prior to the effective date
of the Smith et al. reference. Conception is the mental
part of the inventive act. The Applicant proves
conception either by demonstrative evidence or by a
complete disclosure to another. In this case, providing
a photocopy of a lab notebook page having the word "E-
Card" is not demonstrative evidence. Demonstrative
evidence is evidence that would enable one skilled in the
art to understand what the invention is; e.g.: a
flowchart or a block diagram is such evidence in this
technological art. Furthermore, the evidence showing
communications between an inventor and a third party does
not show complete disclosure to another. It is clear
that the communication[s] were in regards to a licensing
agreement. A reasonable businessman when in a potential
arms-length negotiation would not "show all his cards" to
his adversary for fear of losing leverage and proprietary
rights; therefore, complete disclosure to another was not
conveyed at these meetings or communications.
. . .
The evidence submitted is insufficient to establish
diligence from a date prior to the date of reduction to
practice to [sic, of] the Smith et al. reference to
constructive reduction to practice, i.e. the Applicant's
filing date. The particular "screen shots" are
insufficient to show diligence because the Applicant has
not provided evidence to establish the contents of each
document and the authenticity of the dates shown next to
the document icons.
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