Appeal of interference proceeding in which priority was awarded to the senior party. The issue on appeal was whether the junior party proved by a preponderance of the evidence that he reduced the invention to practice prior to the senior party’s filing date. The invention involved was a photomechanical reproduction process, which was used for producing a master copy of an original document for use in printing further copies. The court reversed the board, holding that the junior party had demonstrated utility and thus had reduced the invention to practice.
The court first noted that “a commercially acceptable embodiment of the invention is not necessary to proof of actual reduction, to practice†and stated that “it is the ultimate goal of every inventor to develop a process which is successful in a competitive commercial market. Simply because the ultimate goal- a process of commercial quality- has not been achieved is no reason to conclude that the practicality of the process has not otherwise been demonstrated or that it does not perform the function for which it was designed.†Id. at 1054-55.
The court next stated that “{a} successful reduction to practice does not require perfection or incapability of improvement.†Id. at 1056. Finding that the board “placed undue emphasis on that minority of exhibits showing poor results and . . . neglected to accord proper weight to the good results shown in the exhibits,†the court stated that the “mere fact that {some exhibits} illustrate that tests using some materials under some conditions were not successful does not mitigate the fact that the successful tests do establish with a reasonable certainty or probability that the process will operate in the intended manner.†Id. at 1057.
Finally, the court noted that standard that “{t}o establish a reduction to practice of the process steps of the count, {the junior party} has the burden of establishing by sufficient credible testimony that the limitations as to materials, properties, steps, and results required by the count were present in the work performed.†Id. at 1060. The court found this standard met, and reversed the board.
Excerpts and Summaries
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Saturday 20 of September, 2008 17:25:29 GMT by Unknown
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Monday 22 of September, 2008 15:40:25 GMT by Unknown