Patent Interference No. 103,892 Page 12
shown “that the inventor actually prepared the composition and knew it would work.”
Mikus v. Wachtel, 542 F.2d 1157, 1159, 191 USPQ 571, 573 (CCPA 1976). Further,
“[w]ith regard to the first prong, this Court’s well established precedent requires that the
constructed embodiment … include the precise elements recited in the count.” Eaton v.
Evans, 204 F.3d at 1097, 53 USPQ2d at 1698. Regarding recognition of the
embodiment of the count, “it is not necessary that the product relied on by a party … be
identified with absolute certainty, or that a complete analysis should invariably be made.
It is sufficient if the evidence, taken as a whole, establishes, with reasonable certainty,
the identity of the product.” Young v. Bullitt, 223 F.2d 347, 352, 110 USPQ 5, 59 (CCPA
1956).
The second part of the test requires a showing of a recognition of a specific
practical utility for that embodiment. Whether a practical utility has been established is a
question of fact. One must demonstrate that the invention is “suitable for its intended
purpose.” Steinberg v. Seitz, 517 F.2d 1359, 1363, 186 USPQ 209, 212 (CCPA 1975).
An inventor’s testimony used in support of either prong (i.e., actual preparation,
recognition and utility) must be corroborated by independent evidence in order to
establish an actual reduction to practice. Knorr v. Pearson, 671 F.2d 1368, 1373, 213
USPQ 196, 20 (CCPA 1982), citing Reese v. Hurst, 661 F.2d 1222, 1225, 211 USPQ
936, 940 (CCPA 1981). Therefore, Davie “must provide independent corroborating
evidence in addition to his own statements and documents.” Hahn v. Wong, 892 F.2d
1028, 1032-33, 13 USPQ2d 1313, 1317 (Fed. Cir. 1989). The independent evidence
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