Interference No. 104,180
combination of elements disclosed by Alzeta to the senior party at the May 1, 1993 meeting
constitutes prior art under 35 U.S.C. § 102(f). The combination of those elements with the other
prior art showing the elimination of the double wall when the plenum becomes substantially the
diameter of the skirt and, perhaps, the refractory type insulation, renders the Moore claims
obvious under 35 U.S.C. § 103. Subject matter derived from another not only is itself
unpatentable to the party who derived it under § 102(f), but, when combined with other prior art,
may make a resulting obvious invention unpatentable to that party under a combination of
§§ 102(f) and 103. Purportedly, the party Moore has failed to present any evidence rebutting
testimony of the party Bartz that any elements added by Moore are obvious in view of the critical
elements contributed by Bartz and, thus, Moore is foreclosed from patenting its claims
corresponding to the count.
OPINION
Bartz’s Case for Priority
To establish conception, it must be shown by corroborated evidence that the party was in
possession of every feature of the count and that every limitation of the count was known to the
inventors at that time. Hitzeman v. Rutter, 243 F.3d 1345, 1354, 58 USPQ2d 1161, 1167 (Fed.
Cir. 2001). Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985).
Activity alleged to supply proof of conception of an invention defined in a given count must
include all of the limitations of the count since each express limitation is considered material and
cannot be disregarded. Schur v. Muller, 372 F.2d 546, 551, 152 USPQ 605, 609 (CCPA 1967).
Whereas, it is not established that Bartz was in possession of a water heater comprising elements
1, 3, 4, 6 and 7 of the count in combination with elements 2 and 5 at the time of the May 1, 1993
meeting, we are of the opinion that Bartz was not in possession of the subject matter of the count
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