Interference No. 104,290
testified there were no criteria for success formally estab
lished. In this instance, we give the contemporaneous grant
proposal substantially more credence. The experiments per
formed in June through October, inclusive were preliminary in
nature, and in vivo tests were needed for a de juz-e reduction
to practice.
Proof of actual reduction to practice requires demon
stration that the embodiment relied upon as evidence of priority
actually worked for its intended purpose. Newkirk v. LuJejian,
825 F.2d 1581, 1582, 3 USPQ2d 1793, 1794 (Fed. Cir. 1987). As
was stated in Paine v. Tnoue, 195 USPQ 598, 604 (Bd. Pat. Int.
1976):
The nature of testing required to estab
lish a reduction to practice depends on the
particular facts of each case; a common-sense
approach is required to determine if the
testing is sufficient. What is required is
that it be reasonably certain the invention
will perform its intended function in actual
use. The tests must be sufficient to estab
lish utility beyond probability of failure,
and must be sufficient to give assurance the
device will operate under normal working
conditions for a reasonable length of time
[citations omitted).
In Scott v. Finney, 34 F.3d 1058, 1063, 32 USPQ2d 1115, 1119
(Fed. Cir. 1994), the interfering subject matter concerned a
hydraulic, inflatable penile implant. In considering what scope
28
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