Interference No. 104,180
at that time. The testimony of David Bartz at pages 22 and 23 of Bartz’s record (BR-22, 23),
paragraphs 9 and 10, that of Martin Carswell at BR-32, 33 , paragraphs 9 and 10, that of
corroborating witness, Kendall, at BR-2, 3, paragraphs 9 and 10, and that of corroborating
witness, Pam, at BR-11, 12, paragraphs 10-12, establish that count elements 1, 3, 4, 6 and 7 were
known to the junior party. However, the junior party does not contend, and we do not find, that
it was in possession of features 2 and 5 of the water heater defined by the count.4 All seven
elements of the count may well have been discussed at the meeting and known to those attending
the meeting, but there is no evidence establishing that the junior party conceived of a water
heater unit at that time comprising all seven elements. It is not established that elements 1, 3, 4
and 7 were discussed with respect to a complete water heater as defined in the count; elements 2
and 5 were discussed with respect to a water heater built by American having a metal screen
burner, not a ceramic burner.5
BX-11 does not establish conception by the junior party no later than May 14, 1993. This
exhibit is identified as a memorandum by Richard Pam of the May 1, 1993 meeting. Although it
relates to elements 1-6 of the count, it is silent as to element 7. Furthermore, it does not describe
a single water heater embodiment comprising all of the elements of the count.
Derivation by Moore
To establish derivation, there must be a complete conception of the invention in order to
disclose it to another. Davis v. Reddy, 620 F.2d 885, 889, 205 USPQ 1065, 1069 (CCPA 1980).
Here, the party Bartz did not establish its conception at the time of the May 1, 1993 meeting and,
accordingly, it cannot establish communication of the invention to the party Moore at that time.
4 At page 9, lines 14-21, the junior party argues to the effect that elements 2 and 5 would have been obvious to add
to a water heater having elements 1, 3, 4 and 7.
5 It is not clear from the evidence that refractory-type insulation comprising element 6 was discussed at the meeting
with any degree of specificity.
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