Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 31
Tabakoff still further argues that Nichols has misconstrued polite acknowledgments in
correspondence by Dr. Tabakoff that Dr. Nichols performed routine experiments and
synthetic activities that should inure to Tabakofrs benefit. [TO, pp. 35-37.]
1 . conception
"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 therefore to be applied
in practice and a conception must encompass all limitations of the claimed invention."'
Kridl v. McCormick, 105 F.3d 1446, 1449, 41 JSPQ2d 1686, 1689 (Fed. Cir. 1997).
Conception "is complete only when the idea is so clearly defined in the inventors mind
that only ordinary skill would be necessary to reduce the invention to practice, without
extensive research or experimentation." Burroughs, 40 F.3d at 1228, 32 USPQ2d at
1919. Furthermore, a party must provide independent corroboration for his alleged
conception. Reese v. Hurst, 661 F.2d 1222, 1225, 211 USPQ 936, 940 (CCPA 1981).
There is no particular formula that an inventor must follow in providing corroboration of
his testimony of conception. Kridl, 105 F.3d at 1450, 41 USPQ2d at 1689. Rather,
whether a putative inventor's testimony has been sufficiently corroborated is determined
by a "rule of reason" analysis, in which "an evaluation of all pertinent evidence must be
made so that a sound determination of the credibility of the inventor's story may be
reached." Price, 988 F.2d at 1195, 26 USPQ2d at 1037. However, that "rule of reason"
analysis does not alter the requirement of corroboration of an inventors testimony.
Brown v. Barbacid, 276 F.3d 1327, 1335, 61 USPQ2d 1236, 1240 (Fed. Cir. 2002).
Since conception is a mental act, "it must be proved by evidence showing what the
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