Interference 103,781
October 30, 1986. First, we compare the memorandum’s teaching
as it relates to the invention of Count 2 as represented by
Fischhoff’s claims, not the invention of Count 2 as represented
by Adang claims. Accordingly, we need not be overly concerned,
as was the Federal Circuit in Mycogen Plant Sci., Inc. v.
Monsanto Co., 252 F.3d at 1312-14, 58 USPQ2d at 1896-97, with
Adang’s claim limitations requiring “a greater number of codons
preferred by the intended plant host” or “the frequency of codon
usage of the plant” (e.g., Claims 1 and 11 of Adang’s U.S. Patent
5,380,831). Rather, we need consider whether the “written
memorandum” presents “‘a definite and permanent idea of the
complete and operative invention [of Claim 3 of Fischhoff’s
involved application], as it is therefore to be applied in
practice.’ Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857,
862 (Fed. Cir. 1985) . . .”, Kridl v. McCormick, 105 F.3d 1446,
1449, 41 USPQ2d 1686, 1689 (Fed. Cir. 1997). Moreover, the
invention of Claim 3 of Fischhoff’s involved application must
be so clearly defined in the “written memorandum” that “only
ordinary skill would have been necessary to reduce the invention
to practice, without extensive research or experimentation,”
Burroughs-Wellcome Co. v. Barr Labs., 40 F.3d 1223, 1228,
32 USPQ2d 1915, 1919 (Fed. Cir. 1994).
But an inventor need not know that his invention will work
for conception to be complete. Applegate v. Scherer,
-67-
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