Interference Nos. 103,882, 103,933, and 104,228 Consolidated Judgment
Gregory v. Tsui et al. Page 18
Tsui argues that policy militates for a practice that enforces complete disclosure in the
earliest accorded benefit application. Tsui advances two principal reasons for its position. The
first, that it is the policy of the agency to discourage misconduct and to ensure the issuance of
valid patents, is not persuasive. The argument is directed to claims and not to the relevant count.
To the extent a problem really exists, it can be resolved in further prosecution. Had Tsui really
felt such scruples about being a private attorney general with regard to Gregory's alleged best-
mode violation, it could have filed a timely motion. It did not. The second argument, invoking
In re Costello, 717 F.2d 1346, 219 USPQ 389 (Fed. Cir. 1983), requires further discussion.
Section 102(g) requires not only priority of invention, but also that the earlier inventor
"had not abandoned, suppressed, or concealed" the invention. In Costello, the applicant had
literally abandoned its earliest application and was now trying to overcome a rejection under
35 U.S.C. 102(e). Since Costello involves rejection of a claim and a lack of copendency under
35 U.S.C. 120, it is not really on point. Nevertheless, the court in Costello pointed to an earlier
interference decision for the proposition that an abandoned application can only serve as
evidence of conception, not as a constructive reduction to practice. 717 F.2d at 1350 n.13 & text,
219 USPQ at 391 n.13 & text, citing Carty v. Kellogg, 7 App. D.C. 542, 1896 Comm'r Dec. 188
(1896). Carty relies on an interference decision, Hien v. Pungs, 1894 Comm'r Dec. 92, 95, which
in turn traces the rule to two earlier interference decisions, Beach v. Fowler, 1889 Comm'r Dec.
187, and Webster v. Sanford, 1888 Comm'r Dec. 92, both of which deal with abandonment of an
application in the absence of any actual reduction to practice. Cf. Correge v. Murphy, 705 F.2d
1326, 1330, 217 USPQ 753, 756 (Fed. Cir. 1983) (explaining that failure to make the invention
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