Interference No. 103,635
the U.K., not in the U.S., and we do not view a description of the process that was
transmitted to and received in the U.S. as being a successful performance of the described
process in the U.S.
Accordingly, we are not persuaded by this last line of argument and find that Scott
has not met its burden of establishing an actual reduction to practice prior to Koyama's
priority date.
We find, therefore, that junior party Scott has not proved prior invention by a
preponderance of the evidence and therefore Koyama is the presumptive first inventor.
PATENTABILITY
In this section, we review the question of patentability raised by the Scott. As we
have stated, Koyama is entitled to priority based on their constructive reduction to practice
as of the March 13, 1990 filing date of their Japanese application. However, Scott has
moved under 37 C.F.R. § 1.633(a) (paper no. 22) against Koyama on the ground that
Koyama's claim 7 is not patentable to Koyama because it fails to comply with the best
mode requirement of 35 U.S.C. § 112, first paragraph.16 Since we have disposed of the
question of priority, supra, further consideration of this patentability issue in this
interference proceeding requires us to direct our attention only to the claims and not to the
count. In re Van Geuns, 788 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993).
The question of patentability is therefore restricted to Koyama’s claim 7.
We reproduce Koyama's claim 7:
7. In a method for producing 1,1,1,2-tetrafluoroethane in two reaction stages involving
16 Koyama opposed the motion (paper no. 35) to which Scott filed a reply (paper no. 43).
19
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