Interference 102,728
Our reasons follow.49
49 For purposes of clarification we address two of Singh’s arguments.
1. We note Singh’s argument that “At page 26 of the Decision on final hearing,
this Board found that the work ‘performed by Dr. Singh on January 21, 1983’ provided a
reduction to practice of the subject matter of the Count.” Paper No. 180, p. 21. This is
incorrect. Rather, the Board stated that the experiments in the laboratory notebook on
the referenced day were the only evidence of record which appeared to corroborate Dr.
Singh’s statement that he had a plan to employ the 24-mer in the loop deletion
procedure. That is, Dr. Singh’s laboratory notebook page (SX3 at Bates Nos. 136-137)
appeared to corroborate Dr. Singh’s conception of a method of making an invention
within the scope of the count. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d at
1378, 231 USPQ at 89. The Board made no findings with respect to the criteria
necessary to establish an actual reduction to practice. To that end, we point out that
the Court recently held in Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 592, 44
USPQ2d 1610, 1613 (Fed. Cir. 1997), that prove an actual reduction to practice
. . . an inventor must establish that he “actually prepared the composition and
knew it would work.” Hahn v. Wong, 892 F.2d 1028, 1032, 13 USPQ2d 1313,
1317 (Fed. Cir. 1989) (quoting Mikus v. Wachtel [II], 542 F.2d 1157, 1159, 191
USPQ 571, 573 (CCPA 1976)); see also Burroughs Wellcome Co. v. Barr Lab.,
Inc., 40 F.3d 1223, 1228, 32 USPQ2d 1915, 1919 (Fed. Cir. 1994) (reduction to
practice requires “the discovery that an invention actually works”): see also
Standard Oil Co. (Indiana) v. Montedison, S.p.A., 494 F. Supp. 370, 206 USPQ
676 (D. Del. 1980), aff’d, 664 F.2d 356, 212 USPQ 327 (3d Cir. 1981) (reduction
to practice requires a showing of three elements: (i) production of a composition
of matter satisfying the limitations of the count, (ii) recognition of the composition
of matter, and (iii) recognition of a specific practical utility for the composition).
In addition, an actual reduction to practice must be corroborated by facts and
circumstances independent of information received from the inventor. Coleman v.
Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985); Reese v. Hurst, 661
F.2d 1222, 1225, 211 USPQ 936, 940 (CCPA 1981). Thus, since the Board made no
findings with respect to the criteria necessary to establish an actual reduction to
practice, we find Singh’s arguments in this regard to highly presumptuous.
2. Singh argues that the APJ’s Order, dated September 19, 2000 (Paper No.
171), requires a showing of diligence for “each and every day” from a date just prior to
Brake’s January 12, 1983 filing date until Singh’s reduction to practice and, thus, is
improper. Paper No. 180, pp. 23-24. According to Singh, the case law does not
require that activity must be accounted for on each day of the critical period; only a
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