Interference 102,728
of objective evidence, we accord arguments of counsel little, or no, evidentiary weight.
In re Payne, 606 F.2d at 315, 206 USPQ at 256; Meitzner v. Mindick, 549 F.2d at 782,
193 USPQ at 22; In re Lindner, 457 F.2d at 508, 173 USPQ at 358.
We are mindful of the Court’s concern that the no other “substantial use” rule set
forth in Berges v. Gottstein, 618 F.2d 771, 774-75, 205 USPQ 691, 694 (CCPA 1980),
may be applicable to the facts of this case. Singh v. Brake, 222 F.3d at 1369, 55
USPQ2d at 1678. However, we agree with Brake that there are many facts which
distinguish the present case from Berges and thus preclude Singh from coming within
Berges.
First, the issue in Berges, was whether the inventor’s own evidence of an actual
reduction to practice of a compound within the scope of the count was adequately
corroborated. Berges v. Gottstein, 618 F.2d at 772, 205 USPQ at 692.
Here, the issue is conception and whether the inventor’s own evidence
adequately corroborates completion of the mental part of the invention. Burroughs
Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d at 1228, 32 USPQ2d at 1919. That is,
whether Dr. Singh’s notebooks and an order for one of two unique reagents needed to
perform a novel method are sufficient to establish conception of (i) a compound within
the scope of the count, and (ii) an operative method of making it. Burroughs Wellcome
Co. v. Barr Laboratories, Inc., 40 F.3d at 1229-30, 32 USPQ2d at 1921; Fiers v. Revel,
interferon molecule containing the natural N-terminus.” Application No. 06/506,098,
p. 26, lines 3-6. We find no mention of loop deletion mutagenesis or the use of the
LAC primer in Singh’s application. We note that Singh does argue conception plus
diligence of the method relied upon to establish constructive reduction to practice.
80
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