all the elements of the count (Kndl, 105 F.3d at 1449, 41 USPQ2d at 1689), not just the "essence"
of the invention.
The next document relied upon is said to be a more detailed disclosure which was submitted
to patent counsel for preparation of a patent application. The document is an attachment to Paper
53. The document bears the date of October 11, 1997. Dr. Heshmatpour testifies:
Prior to October 16,1997, 1 wrote out my invention disclosure in more detail
(13 pages + 2 drawings) and sought the advice of new counsel in anticipation
of a dispute with Mr. Megy. A true and correct copy of this invention
disclosure is attached hereto and marked as Exhibit 21. 1 then met around
this time with Samuel Ragoncse, Esquire. Mr. Ragoncse referred me to a
paten t attorney, Allan N. Kutzenco, Esquire, at Connolly, Bove, Lodge &
Hutz LLP. I spoke to Mr. Kutzenco on the telephone around this time
regarding my invention disclosure and met him in person at his office prior
to October 16,1997. During this meeting, I gave him my invention disclosure
and instructed him to prepare a patent application for filing in the United
States Patent and Trademark Office.
Heshniatpour Declaration, p.7, 18.
Again, Dr. Heshmatpour does not provide an explanation of how this document proves
conception of an embodiment meeting all the limitations of at least one of the alternatives of the
count. We have reviewed the document on our own. The document appears to us to describe a
method for making aluminum master alloys using gas injection, including master alloys to be used
for grain refining in the conventional manner. The disclosure does not appear to describe an in-situ
process for making a cast grain-refined aluminum alloy which is the subject matter of all the
alternatives of the count. The document is titled: "Process for Manufacturing High Potency-Ultra
Clean Aluminum Grain Refining and Specialty Master Alloys." In a section captioned "Summary
of the Invention," the document states:
It is an object of the invention to provide improved grain refiners for
aluminum that can be used in processing of aluminum alloy castings which
would allow subsequent production of thin sheet, foil, fine wire and other
forms without concern for product degradation. Another object of the
10 A redacted copy is also of record in the Heshmatpour involved application as Exhibit 21 to the Rule
1.608(b) Evidentiary Declaration 1 of Bahrnan Heshmatpour (Application 09/020,616, Paper 7).
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