Interference No. 103,635
something related to the process of the count was in the U.S. prior to the priority date. The
question is whether a specification alone can rise to the level of being an actual reduction
to practice.
In that regard, another condition essential to establishing an actual reduction to
practice is that "[t]he invention must have been embodied in a physical or tangible form."
Element (c); Rivise & Caesar, Interference Law and Practice § 132, Vol. 1, p. 396,
The Michie Co. (1940). There is an actual reduction to practice of the subject matter of the
count when there is a physical embodiment of the invention in tangible form. See Ex parte
Dunne, 20 USPQ2d 1479, 1480 (Bd. Pat. App. & Int. 1991). "Under our precedent there
cannot be a reduction to practice of the invention ... without a physical embodiment which
includes all limitations of the claim," UMC Elecs. Co. v. United States, 816 F.2d 647, 652,
2 USPQ2d 1465, 1468 (Fed. Cir. 1987), cert. denied, 484 U.S. 1025 (1988). A document
describing a process is not, in our view, a "physical embodiment" of the process.
Accordingly, we conclude that the specification that was received in the U.S., though
describing the process of the count, is not an actual reduction to practice in the U.S. of the
subject matter of the count.
We appreciate that Scott views the specification differently, even so far as to
contend that the present situation contrasts from that of Shurie in that the "process at issue
was introduced into the U.S. in such full and complete detail that the process went directly
into plant operation" (SB 23). However, Shurie is very clear: "the invention of a process is
completed, or reduced to practice, when it is successfully performed" (699 F.2d at 1045,
216 USPQ at 1045). On the facts of this case, the process was successfully performed in
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