Interference No. 104,745
page 71 of Fischer's notebook (BX 2066), which begins: "Set up to test on a LC/MSD the
possibility of generating ions at atmosphere by MALDI." The term "MALDI" implies the use of
a laser and a matrix to cause ionization of another material, i.e., an analyte.
Consequently, we are crediting Bai with a conception date of 19 December 1997.
Bai's alleged 23 December 1997 actual reduction to practice
As explained above, rather than reciting the spectrometer as one of the elements of the
count, the Bai count alternative requires only that the recited ionization apparatus be capable of
an operative connection with the spectrometer, which we have held need not produce a mass
spectrum of the analyte material. However, an actual reduction to practice requires a
determination that the subject matter recited by the count is satisfactory for its intended purpose.
See Eaton v. Evans, 204 F.3d 1094, 1097, 53 USPQ2d 1696, 1698 (Fed. Cir. 2000):
[A] party seeking to establish an actual reduction to practice must satisfy a
two-prong test: (1) the party constructed an embodiment or performed a process
that met every element of the interference count, and (2) the embodiment or
process operated for its intended purpose. See Cooper [v. Goldfarb], 154 F.3d
[1321,] 1327, 47 USPQ2d [1896,] 1901 [(Fed. Cir. 1998)]; Estee Lauder Inc. v.
L'Oreal S.A., 129 F.3d 588, 593, 44 USPQ2d 1610, 1614 (Fed. Cir. 1997)
(requiring that the invention work for its intended purpose before an actual
reduction to practice exists).
This obligation applies even if the intended purpose is not recited in the count. See DSL
Dynamic Sciences Ltd v. Union Switch & Signal, 928 F.2d 1122, 1125, 18 USPQ2d 1152, 1154
(Fed. Cir. 1991)("[P]roof of actual reduction to practice requires a showing that 'the embodiment
relied upon as evidence of priority actually worked for its intended purpose.' Newkirk v.
Lulejian, 825 F.2d 1581, 1582, 3 USPQ2d 1793, 1794 (Fed. Cir. 1987). This is so even if the
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