Interference 103,781
Wellcome Co. v. Barr Labs., 40 F.3d 1223, 1228, 32 USPQ2d 1915,
1919 (Fed. Cir. 1994). In short, Adang’s case for priority of
the invention defined by Claim 3 of Fischhoff’s involved
application is weak. As said in Burroughs-Wellcome Co. v. Barr
Labs., 40 F.3d at 1227-28, 32 USPQ2d at 1919 (emphasis added):
Conception is the touchstone of inventorship, the
completion of the mental part of invention. Sewall v.
Walters, 21 F.3d 411, 415, 30 USPQ2d 1356, 1359 (Fed. Cir.
1994). It is “the formation in the mind of the inventor, of
a definite and permanent idea of the complete and operative
invention, as it is hereafter to be applied in practice.”
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986)(citation
omitted). Conception is complete only when the idea is so
clearly defined in the inventor’s mind that only ordinary
skill would be necessary to reduce the invention to
practice, without extensive research or experimentation.
Sewall, 21 F.3d at 415, 30 USPQ2d at 1359. . . . .
Thus, the test for conception is whether the inventor
had an idea that was definite and permanent enough that one
skilled in the art could understand the invention; the
inventor must prove his conception by corroborating
evidence, preferably by showing a contemporaneous
disclosure. An idea is definite and permanent when the
inventor has a specific, settled idea, a particular solution
to the problem at hand, not just a general goal or research
plan he hopes to pursue. See Fiers v. Revel, 984 F.2d 1164,
1169, 25 USPQ2d 1601, 1605 (Fed. Cir. 1993); Amgen, Inc. v.
Chugai Pharmaceutical Co., 927 F.2d 1200, 1206, 18 USPQ2d
1016, 1021 (Fed. Cir. 1989) . . . . These rules ensure that
patent rights attach only when an idea is so far developed
that the inventor can point to a definite, particular
invention.
We recognize that, as stated in Burroughs-Wellcome Co. v.
Barr Labs., 40 F.3d at 1228, 32 USPQ2d at 1919-1920, “an inventor
need not know that his invention will work for conception to be
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