41 .,USPQ2d at 1689. Rather, whether a putative inventor's testimony has been sufficiently
corroborated is determined by a "rule of reason7' 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 1031 at 1037. However, that "rule of reason"
analysis does not alter the requirement of corroboration of an inventor's testimony. Brown v.
Barbacid, 276 F.3d 1327,1335,61 USPQ2d 1236,1240 (Fed. Cir. 2002). Evidence of the inventive
facts must not rest alone on the testimony of the inventor himself. Coove , 154 F.3d at 1330, 47
USPQ2d at 1903. Because conception is a mental act, "it must be proven by evidence showing what
the inventor has disclosed to others and what that disclosure means to one of ordinary skill in the
art." In re Jolley, 308 F.3d 1317, 1321, 64 USPQ2d 1901, 1904 (Fed. Cir. 2002) quoting Spero v.
Ringold, 377 F.2d 652, 660, 153 USPQ 726, 732 (CCPA 1967). The evidence must show that the
inventor disclosed to others his "completed thought expressed in such clear terms as to enable those
skilled in the art" to make the invention. Coleman v. Dines, 754 F.2d 353,359,224 USPQ 857,862
(Fed. Cir. 1985); Field v. Knowles, 183 F.2d 593, 600, 86 USPQ 373, 379 (CCPA 1950).,
Dr. Heshmatpour testifies that he conceived the invention prior to October 16, 1997:
3. (a) Prior to October 16, 1997, 1 conceived the invention claimed in my
patent application, which is directed to a process involving gaseous grain
refining reactions.
Heshmatpour Declaration, p. 2, 1 3(a)7 Dr. Heshmatpour further testifies that he described his
invention in a letter to a patent attorney. He testifies:
(b) Prior to October 16, 1997, 1 submitted a written description of my
invention, entitled Process for Manufacturing High Potency Grain Refiners
for Aluminum Industry, in a letter to a patent attorney, William G. Lane,
Esquire ("Greg" Lane), whose office is located at 18400 Von Karman
Avenue, Suite 500, Irvine, California 92715.
Heshmatpour Declaration, p. 2, 1 3(b). Dr. Heshimatpour testifies that a copy of the written
description submitted to thepatent attorney is provided as Exhibit I to the Heshimatpour Declaration,
7 Attaclunent to Paper 53, Rule 1.608(b) Evidentiary Declaration lof Bahman Heshmatpour, p. 2. A
copy is also of record in the Heshmatpour involved application as Evidentiary Declaration I which is part of Application
09/020,616, Paper 7, Evidentiary Declarations 1-3.
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