Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 14
McDonald's advocate. We decline the invitation. In re Swartz, 232 F.3d 862, 864,
56 USPQ2d 1703, 1704 (Fed. Cir. 2000) (declining a similar invitation).
[45] Miyazaki denies McDonald Fact 13 (Paper 145 at 11) as wholly unsupported by factual
evidence. Specifically Miyazaki contends:
McDonald Affidavit 4 of Ted P. McDonald, cited as record reference 13(a),
describes nothing but use of TSF and does not establish reduction to
practice of use of any fragment of TPO. McDonald Affidavit of Rose
Clif[t], cited as record reference 13(b), describes nothing but experimental
work with TSF. McDonald Affidavit of Marilyn Cottrell, cited as record
reference 13(c), describes nothing but experimental work with TSF.
In order to establish an actual reduction to practice, the inventor must prove that:
(1) he constructed an embodiment or performed a process that met all the limitations of
the interference count; and (2) he determined that the invention would work for its
intended purpose. Moreover, the inventor must contemporaneously appreciate that the
embodiment worked and met all of the limitations in the count. Coope , 154 F.3d
at 1327, 47 USPQ2d at 1901. These are two distinct requirements and a party must
satisfy each one to establish an actual reduction to practice. Eaton v. Evans, 204 F.3d
1094, 1098, 53 USPQ2d 1696, 1699 (Fed. Cir. 2000).
Once again, the glaring weakness in McDonald's proofs is that they are directed
to TSF rather than to a TPO polypeptide fragment within the scopes of either count.
While McDonald contends that TSF is such a fragment, we do not agree for the
reasons provided above.
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