Interference No. 103,635
plant (see e.g., the Scott declaration, paper no. 22, which duplicates the process in a lab
experiment), that an experiment could have been conducted quickly and easily, that such
an experiment was already conducted in the U.K. and therefore could have been repeated
in the U.S., and that, notwithstanding the promptness11 with which the process could have
been conducted, the actual practice of the process did not take place for another two years
is suggestive of a delay in reducing the invention to practice.12 We conclude that the
activities were not connected with reduction to practice of the process but rather were
connected with the commercialization of the process. We can point to no activity that
indicates an effort by Scott to reduce the invention to practice rather than or in addition to
the efforts to commercialize it.
Accordingly, we find that the activities for the critical period March 12-29, 1990,
were solely conducted for the purpose of commercializing the product of the process of the
count. "However, commercial activity does not constitute reasonable diligence in
achieving a reduction to practice." Antoshkiw v. Pevsner, 224 USPQ 1049, 1052 (Bd. Pat.
Int. 1983) (citing Burns v. Curtis, 172 F.2d 588, 80 USPQ 587 (CCPA 1949)13).
11 Compare with Honeywell, Inc. v. Diamond, 499 F. Supp. 924, 928-31, 208 USPQ 452, 460 (D.D.C. 1980):
"a reduction to practice could have been achieved promptly at any time during the many years since 1963,
because the required components, although not commercially satisfactory in all respects, were available."
12 "[O]ne may not ordinarily delay the actual or constructive reduction to practice of some invention
indefinitely, while an attempt is being made to commercialize the same," Fageol v. Midboe, 56 F.2d 867,
870, 13 USPQ 30, 34 (CCPA 1932).
13 “It is well settled that efforts to exploit an invention commercially do not constitute diligence in reducing it
to practice. See Hurd v. Smith, 97 F.2d 147, 25 C.C.P.A., Patents, 1137; Preston et al. v. White, 97 F.2d
160, 25 C.C.P.A., Patents, 1219; and Petersen v. Thomas, 56 App.D.C., 113, 10 F.2d 908.
It is argued by counsel for appellant that the devices tested in laboratories were of such a nature as
to be capable of actual use on an airplane. If such was the case, it would have been a relatively simple
matter to arrange for a test under actual service conditions. In this connection it may be observed that
another device, not here involved, designed by appellant to accomplish substantially the same purpose as
12
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