Patent Interference No. 103,812
Rosenquist conceived of hydrolyzing T-840 to form an endcapping compound within the scope
of the count prior to the senior party's effective filing date. See RR, pp. 3-4, paragraph 6 ("Prior
to October 1993, I conceived of hydrolyzing T-840 to form the corresponding benzotriazol
benzene propanoic acid . . . ."). However, a conception is not an actual reduction to practice.
Compare Cooper, 154 F.3d at 1327, 47 USPQ2d at 1901 (conception is the formation, in the
mind of the inventor, of a definite and permanent idea of the complete and operative invention,
as it is thereafter to be applied in practice); with Estee Lauder v. L'Oreal, S.A., 129 F.3d 588,
592, 44 USPQ2d 1610, 1613 (Fed. Cir. 1997) (to prove an actual reduction to practice, an
inventor must establish that he actually prepared the invention and knew it would work).
IV.
The count further requires interfacially condensing a phosgene derivative, a bis-phenol
derivative and an endcapping or chain stopping molecule, including 3-(2H-benzotriazol-2-yl)-5-
(1,1-dimethylethyl)-4-hydroxy-benzene-propanoic acid, wherein the endcapping agent is
chemically bound to the condensation product by an ester linkage through the acid substituent of
the phenolic substituent of the endcapping or chain stopping molecule. See Rosenquist patent
claim 1.
According to junior party Rosenquist's testimony, shortly before February 8, 1994, Dr.
Rosenquist gave a portion of the "5249-58" product to Mr. Butler. See RR, p. 6, paragraph 8.
From February 8 through February 10, 1994, Mr. Butler conducted three interfacial
polycarbonate polymerizations using different proportions of the "5249-58" product as the
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007