Ex Parte JOHNSON - Page 7




             Interference No. 104,313                                                                                         
             Sauer Inc. v. Kanzaki Kokyukoki Mfg. Co., Ltd.                                                                   

             Cricchil 567 F.2d 382, 385, 196 USPQ 294, 296 (CCPA 1977)("It is doubtless true that work                        
             quite unconnected with the reduction to practice cannot be considered. But whether particular                    
             work is sufficiently connected with the invention to be considered to be in the area of reducing it              
             to practice must be determined in the light of the particular circumstances of the case which may                
             be as varied as the mind of man can conceive."); see also Bey v. Kollonitsch, 806 F.2d 1024, 231                 
             USPQ 967 (Fed. Cir. 1986).                                                                                       

                    Because Sauer's involved patent was at one time co-pending with Kanzaki's involved                        
             application, Sauer's burden of proof with regard to demonstrating priority is by a preponderance                 
             of the evidence. See e.g., Bruning v. Hirose, 161 F.3d 681, 684, 48 USPQ2d 1934, 1938 (Fed.                      

             Cir. 1998); Bosies v. Benedict, 27 F.3d 539, 541-42, 30 USPQ2d 1862, 1864 (Fed. Cir. 1994).                      
                    Sauer asserts that Mr. Alan W. Johnson conceived of the invention of the count on                         
             September 8, 1987, and actually reduced it to practice by August 17, 1988. However, from                         
             Sauer's alleged Facts 86-101 it is apparent that testing on the prototype apparatus assembled on                 
             August 17, 1988, did not commence until August 17, 1988, and evidently extended to sometime                      

             in October of 1988. Sauer's own technical expert, Mr. Staffan Kaempe, revealed in his                            

             testimony (Exhibit 2386, 115) that a part of the basis of his opinion is that it took Sauer from                 
             November 1987 to October 1988 to design, build, and test an integrated hydrostatic transmission                  
             based on the design shown in Exhibit 2046. In that regard, note that to establish an actual                      
             reduction to practice, an inventor must prove that (1) he constructed an embodiment or                           
             performed a process that meets all the limitations of the interference count, and (2) he determined              

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