included three declarations and thirty-five exhibits, many of the exhibits were redacted. During the
interference, he has also submitted a collection of "evidence and relevant documents." Paper 53.
The collection appears to include unredacted copies of the documents included with § 1.608(b)
submission as well as additional documents. While the notice declaring this interference prohibits
incorporating arguments by reference to other papers, in light of the fact that this interference is
being prosecuted pro se, we exercise our discretion to consider that paper along with the other papers
submitted as part of Dr. Heshmatpour's case-in-chief.3
Dr. Heshinatpour asserts the following grounds relating to priority:
I . Dr. Heshmatpour invented the subject matter of the count prior to Megy, and
2. Megy derived the subject matter of the invention from Heshmatpour.'
Application 09/020,616, Paper 7, p. 23.
With respect to the prior invention, Dr. Heshmatpour asserts that he was the first to conceive
and first to reduce the invention to practice. Application 09/020,616, Paper 7, p. 23. He does not
argue that he was the first to conceive and last to reduce the invention to practice nor assert diligence
from before Megy's effective filing date to an actual or constructive reduction to practice. Wc thus
turn to Heshinatpour's priority and derivation cases.
ANALYSIS
Actual reduction to practice
In order to establish actual reduction to practice, the inventor must prove that he constructed
an embodiment or perfonried a process that met all the limitations of the claim, and that he
detennined that the invention would work for its intended purpose. Slip Track Systems, Inc. v.
Metal-Lite, Inc., 304 F. 3d 125 6,1265, 64 USPQ2d 1423, 1429 (Fed. Cir. 2002); Cogper v. Goldfarb,
3 Our consideration of Dr. Heshmatpour's case is complicated by the fact that Dr. Heshmatpour's brief
refers to exhibits by number, but the evidence and documents submitted (Paper 53) do not have any exhibit numbers.
While the referenced exhibit numbers often correspond to those submitted during prosecution as part of the § 1.608(b)
showings, others do not correspond and some were apparently submitted for the first time during this interference as
part of Paper 53.
4 Heshmatpour also asserted that Megy was not entitled to the priority benefit ofprovisional Application
60/062,155. Application 09/020,616, Paper 7, p. 23. However, during the preliminary motions phase, Heshmatpour
did not file a motion pursuant to 37 CFR § 1.633(g) to attack the benefit accorded Megy's provisional application in
the notice declaring this interference. Thus, the issue is not before us.
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