However, the testimony is conclusory. No explanation has been provided as to how and why the two
inventions are closely related.
Geerts appears to argue that the two inventions are closely related because (1) they both relate
to aluminoxane co-catalysts (Paper 62, p. 88, ¶ 242) and (2) the aluminoxane which may result from
the invention of the count could be reacted with the boroxine to form a new cocatalyst. (Paper 62,
p. 7, ¶ 15). While both are correct, they are insufficient to establish that boroxine work should be
credited as work on the subject matter of the count. The inventions are significantly different. First,
the processes of making the co-catalysts are entirely different. The invention of the count requires
the reaction of trihydrocarbyl aluminum and a boronic acid. The boroxine work relies on the
reaction of a boroxine with an aluminoxane. Second, it does not appear from the record that the
boroxine work contributed any technical information relevant to the invention of the count. Thus,
no information relating to the boroxine work is included in Geerts’ involved patent. And no
reference to the method of making aluminoxane by the reaction of trihydrocarbyl aluminum and
boronic acid is made in the 061 patent. Indeed, in describing how aluminoxane may be made, the
061 patent merely states that “[o]rganic aluminoxanes can be produced by the partial hydrolysis of
hydrocarbyl aluminum compounds.” GX 2, col. 2, lines 22-23.
b.
During the time evaluation of the invention stagnated in the patent department, Geerts alleges
an additional reduction to practice in September of 1991. The alleged reduction to practice was an
experiment to determine if the trimethyaluminum (Me3Al) which is present in commercial
methylaluminoxane (MAO) could be reacted with boronic acid to form additional MAO. Geerts
characterizes this work as a refinement of the invention.5 Paper 62, pp. 49-50, Part “v.”
(“Additional Refinements Of Co-Catalyst Compositions: Reacting Methylboronic Acid With
Trimethylaluminum In MAO Solution”). However, for an improvement or refinement to an
invention to excuse a delay the refinement must be reflected in the application. Lutzker, 843 F.2d
at 1367, 6 USPQ2d at 1372; Horwath, 564 F.2d at 952, 195 USPQ at 706. Geerts’ involved patent
does not disclose this “refinement.” Thus, the alleged reduction to practice does not excuse the
5 We express no opinion on whether this experiment constitutes an actual reduction to practice.
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