Interference 102,728
realization of the means by which the result is produced.” Id., § 119, p. 350. Until the
inventor has in mind the means as well as the desired result, he has not achieved
complete conception. Land v. Dreyer, 155 F.2d 383, 386, 69 USPQ 602, 605 (CCPA
1946); Mergenthaler v. Scudder, 11 App. D.C. 264, 277 (D.C. Cir. 1897). Conception
of a chemical invention requires both the idea of the compound plus a means of how to
make and use it. Burroughs Wellcome Co. v. Barr Labs, Inc., 40 F.3d at 1227-28, 32
USPQ2d at 1919; Fiers v. Revel, 984 F.2d 1164, 1169; 25 USPQ2d 1601, 1604 (Fed.
Cir. 1993); Oka v. Youssefyeh, 849 F.2d 581, 7 USPQ2d 1169 (Fed. Cir. 1988), citing
Coleman v. Dines 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985); Alpert v.
Slatin, 305 F.2d 891, 894, 134 USPQ 296, 299 (CCPA 1962).
“[T]he test for conception is whether the inventor had an idea that was definite
and permanent enough that one skilled in art could understand the invention; the
inventor must prove his conception by corroborating evidence, preferably by showing a
contemporaneous disclosure. An idea is definite and permanent when the inventor has
a specific settled idea, a particular solution to the problem at hand, not just a general
goal or research plan he hopes to pursue” [emphasis added]. Burroughs Wellcome
Co. v. Barr Laboratories, Inc., 40 F.3d at 1227-28, 32 USPQ2d at 1919.
C. Burden of proof
Singh, as the junior party, whose application was copending with senior party
Brake’s application, has the burden of proving its case for priority by a preponderance
of the evidence. 37 C.F.R. § 1.657(b).
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