154.F.3dl321,1327, 47USPQ2dl896,1901 (Fed. Cir. 1998). Determining that the invention will
work for its intended purpose may require testing, depending on the character of the invention and
the problem that it solves. CoU , 154 F.3d at 1327, 47 USPQ2d at1901. "The adequacy of a
reduction to practice is to be tested by what one of ordinary skill in the art would conclude from the
results of the tests." Slip Track, 304 F.3d at 1265, 64 USPQ2d at 1429 quotin Winter v. Lebourg,
394F.2d575,581,157USPQ574,578(CCPA1968). To prove reduction to practice by invpntor
testimony, the inventor's testimony must be corroborated by independent evidence. Slip Track, 304
F.3d at 1265, 64 USPQ2d at 1429; Cooper, 154 F.3d at 1330, 47 USPQ2d at 1903. The
corroboration "may consist of testimony of a witness, other than an inventor, to the actual reduction
to practice or it may consist of evidence of surrounding facts and circumstances independent of
information received from the inventor." Hahn v. Wong, 892 F.2d 1028, 1032-33, 13 USPQ2d
1313, 1317 (Fed. Cir. 1989); Reese v. Hurst, 661 F.2d 1222, 1225, 211 USPQ 936, 940 (CCPA
198 1). When considering the sufficiency of corroborating evidence of an actual reduction to practice
a reasonableness standard is used. Scott v. Finney, 34 F.3d 1058,1061-62,32 USPQ2d 11115,1118
(Fed. Cir. 1994);HolmwoodN,. Supavanam, 94817.2d 1236,1238,20USPQ2d 1712,1714 (Fed. Cir.
1991).
The count is the disjunction of Megy Claims 1, 17,35,44 or 45 and Heshmatpour Claim 21.
Thus, to prove an actual reduction to practice, Heshmatpour must prove that he carried out a process
for casting aluminum alloys that is covered by at least one of the alternatives of the count and that
that process worked for its intended purpose, i.e., resulted in a cast grain-refined aluminum alloy.
The steps set forth in each count alternative are quite similar. Each alternative requires the
following:
I . Providing molten aluminum;
2. Providing titanium to the molten aluminum alloy;
3. Forming grain refining nuclei in the molten aluminum by introducing a gaseous
material which interacts with the titanium and includes boron, sulfur, nitrogen or
phosphorus; and
4. Solidifying the molten alloy into a grain refined cast product.
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