Interference No. 103,635
were directed to securing a contractor to build a plant in the U.S. Not one activity was
directed to the physical practice of the process. By March 29, 1990, no equipment or
materials were purchased and no experiments were conducted. Rather, each and every
activity during that period, manifested by oral or written communications, was a step in a
plan for realizing the process on a commercial scale.
Scott (SB 19) agrees that "the activities in the U.S. were primarily concerned with
construction of the U.S. plant in order to use the Scott process," but argues that "it is well
established that work towards an actual reduction to practice can be relied on as diligence
towards a constructive reduction to practice." In support thereof, Scott cites Rey-Bellet v.
Englehardt, 493 F.2d 1380, 181 USPQ 453 (CCPA 1974).
We do not find, as Scott does, that the activities during the critical period represent
work that went toward an actual reduction to practice. There is no question that the
activities led to a plant in Louisiana by 1992, nearly two years after the written description
of the process (SX11, SX17) was received in the U.S., and that the plant is where the
process was reduced to practice. But the question is "whether particular work is
sufficiently connected with the invention to be considered to be in the area of reducing it to
practice," Bell Tel. Labs., Inc. v. Hughes Aircraft Co. , 564 F.2d 654, 656, 195 USPQ 695,
697 (3d Cir. 1977), cert. denied, 435 U.S. 924 (1978). This is "determined in the light of
the particular circumstances of the case which may be as varied as the mind of man can
conceive. It is thus peculiarly a question of fact for the finder of the facts to determine in the
light of those circumstances." Id., 564 F.2d at 656, 195 USPQ at 697. Considering the
simplicity of the subject matter of the count, that to practice the invention does not require a
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