Interference 103,781
332 F.2d 571, 573, 141 USPQ 796, 799 (CCPA 1964). He
need only show that he had the idea; the discovery that
an invention actually works is part of its reduction to
practice. Id.
Claim 3 of Fischhoff’s involved application is a “method for
modifying a wild-type structural [Bt] gene sequence which encodes
an insecticidal protein of [Bt] . . . to enhance the expression
of said protein in plants” comprising the steps of (FPB 163)
(emphasis added):
(a) removing polyadenylation signals contained in said
wild-type gene while retaining a sequence which encodes
said protein; and
(b) removing ATTTA sequences contained in said wild-type
gene while retaining a sequence which encodes said protein.
To disclose all the limitations of method Claim 3 of Fischhoff’s
involved application, to which Count 2 of this interference is
alternatively drawn, Fischhoff’s written memorandum must disclose
modifying a native Bt gene encoding insecticidal Bt protein “to
enhance the expression” of insecticidal Bt protein in a plant by
(a) removing polyadenylation signals from the native Bt gene
while retaining a sequence which encodes insecticidal Bt protein,
and (b) removing ATTTA sequences from the native Bt gene while
retaining a sequence which encodes insecticidal Bt protein
(FPB 163).
As primary support for Fischhoff’s testimonial evidence that
Fischhoff and Perlak conceived of the invention of Count 2, more
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