Interference 102,728
Singh, on the other hand, has not provided any testimony from Mr. Ng, the
scientist who synthesized the 24-mer, that he was aware of Dr. Singh’s intended use of
the compound. That is, Mr. Ng has not testified that he was aware that Dr. Singh was
going to use the 24-mer in the loop deletion mutagenesis procedure to synthesize a
compound within the scope of the count. In fact, Singh has not pointed to one
declarant who has testified that Dr. Singh discussed his plan to employ the 24-mer in
the loop deletion mutagenesis procedure. Burroughs v. Wellcome Co. v. Barr
Laboratories, Inc., 40 F.3d at 1228, 32 USPQ2d at 1919 (“The conception analysis
necessarily turns on the inventor’s ability to describe his invention with particularity.
Until he can do so, he cannot prove possession of the complete mental picture of the
invention”).
Thus, in Berges the Court found that a reasonable analysis of all the evidence
established the existence of the compound of the count. The Court’s holding of an
actual reduction to practice of the invention did not rest solely on the finding that the two
reagents used to make the invention had no other substantial use except for the
research team’s stated goal. Here, however, since Singh has only provided as
evidence of conception, the order of one of two reagents needed to perform the loop
deletion mutagenesis procedure, i.e., the 24-mer, but no evidence that the 24-mer
cannot be used for other procedures, we find the facts of this case insufficient to
substantiate the application of the Berges “no other substantial use” for a reagent rule.
83
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