Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 9
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 later applied in
practice. Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USP02d 1896, 1901 (Fed. Cir.
1998). Conception must include every feature or limitation of the count. Kridl v.
McCormick, 105 F.3d 1446,1449, 41 USPQ2d 1686,1689 (Fed. Cir. 1997). The
critical contested issue is whether McDonald's proof of conception includes any of the
polypeptides in either of the counts.
[34) McDonald contends (Paper 141 at 9):
It has been established in this interference that TSF necessarily and
inherently comprise[s] the sole portion of thrombopoietin (TPO) that is
responsible for TPO's thrombopoietic activity. See (a) Facts 1, 2, 3, 5, 6,
and 17.
[35] Miyazaki denies McDonald Facts 1, 2, 3, 5, 6, and 17 (Paper 145 at 8-10 & 17).
[36] The relative identities of TSF and the polypeptides of the counts are a source of
continuing uncertainty in this proceeding. McDonald contends (Paper 141 at Fact 17,
see also Facts 1 (e) & 5(c)) that:
The Board has recognized that TSF is an active fragment of TPO.
(a) Paper 106 in this Interference entitled Decision on
Reconsideration, pages 210 to 219 of the record.
[37] What the Board said (Paper 106 at 5) was:
McDonald complains that he is being held to a higher standard of
proof because his proofs that TSF is an active fragment of TPO are not
being accepted. The decision [Paper 95] did accept that TSF is an active
fragment of some undefined TPO.
Part of the confusion may stem from the fact that TPO is being used to mean
both (1) the highly specific genus of polypeptides the parties are claiming and (2) any
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