Interference 102,728
Turning first to the Singh’s showing of diligence during the period prior to Brake’s
date of entry into the field, we find that Singh begins with the activities which Dr. Singh
is said to have performed on December 16, 1982. But see, Scharmann v. Kassel, 179
F.2d 991, 997, 84 USPQ 472, 477 (CCPA 1950) (A memo written approximately one
month before, and not immediately prior to, opposing party’s date of entry into the field,
held not to establish diligence for the one month period). We find that Singh’s evidence
of diligence primarily consists of various pages from Dr. Singh’s laboratory notebook
which are (i) unexplained as to content50 and relevance51 to the invention of the count,
and (ii) uncorroborated. The only activity we find relevant to the invention of the count,
and which has been independently corroborated, is the construction and purification of
the 24-mer oligonucleotide which was completed by Mr. Ng by December 20, 1982.
See Mr. Ng’s testimony in footnote 36, above. We find this single activity, which was
completed more than 3 weeks prior to Brake’s effective filing date of January 12, 1983,
to be insufficient to satisfy the reasonable diligence requirement of 35 U.S.C. § 102(g).
50 We direct attention to our discussion on pp. 78-79, above, that documents do
not speak for themselves. 37 C.F.R. § 1.671 (f). It is not sufficient to allege that certain
work was done by simply citing to notebook pages. The burden is on Singh to explain
the entries in the notebook(s) and how they demonstrate diligence towards reducing the
invention of the count to practice.
51 To establish diligence, Singh must demonstrate that the activities performed
on the various dates alleged are specifically directed to the reduction to practice of the
invention of the count. Naber v. Cricchi, 567 F.2d 382, 384, 196 USPQ 294, 296
(CCPA 1977). Mere work does not constitute diligence. Here, for example, we do not
find, and Singh has not provided any evidence which establishes, that the activities
associated with the restriction test, the “alpha factor pre-pro human serum albumin” and
the “bovine interferon alpha-factor vector” which were said to have been performed on
January 8-12, 1983, were required to develop the invention of the count.
88
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