drafting the Barnes patent application, Fedorochko (ff 57). Fedorochko does not testify for
Herman. Herman fails to direct us to corroborating evidence to show that the subject matter of
count 25 was conceived solely by Herman during the week of 8-15 January 1999, and thus
conceived prior to the critical date.
Furthermore, Herman incorrectly uses an obviousness standard, to demonstrate conception
of count 25. Cf. Eaton v. Evans, 204 F.3d 1094, 53 USPQ2d 1696 (Fed. Cir. 2000). Herman
testified that, by itself, the technique of resonant enhancement, e.g., the technique claimed in
count 25, is state-of-the-art and refers to the Herman IDD and Herman NDI as "skill in the art"
(ff 57). Herman, in his declaration, argues that:'
Although, by itself, the technique of Resonant Enhancement is an established
state-of-the-art, that the application of the technique to Claim 24, which in turn is
dependent on the independent Claim 19, is novel. Therefore, Claim 25 depends from
Claim 24 and 19, and I conceived of the novel combination of Claim 25, which includes
the recitations of Claims 24 and 19 (Herman Ex. 2021, page 41).
We understand the argument to mean that since the novel invention in the form of
independent claim 19 was solely conceived by Herman, any claim depending from the
independent claim and obvious in view of the independent claim, is necessarily solely
attributable to Herman'. The argument is rejected.
fn this interference, each and every count is a separate invention with respect to proofs
demonstrating sole inventorship. That the elements of count 25 are well known does not mean
that the elements were known to Herman or that he conceived of the invention of count 25.
' As already discussed, Herman's incorporation of arguments from the Herman
declaration into the brief is unacceptable. Nonetheless, we address the merits of the argument.
I During oral argument, counsel for Herman agreed to our interpretation of the argument
advanced by Herman in his declaration.
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