David M. Geshwind, Appellant, v. Dale F. Rodesch, Appellee, 868 F.2d 1278 (Fed. Cir. 1989)

The decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences (board), Patent Interference No. 101,766, awarding the subject matter of the count in issue to Dale F. Rodesch, the senior party and patentee of U.S. Patent No. 4,475,132, and holding that David M. Geshwind, the junior party applicant, Serial No. 492,815, is not entitled to a patent containing claims corresponding to the count, is affirmed.

Geshwind has not shown that every limitation of the count was known to him at the time, prior to Rodesch's filing, when Geshwind alleges to have conceived of the invention. Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985) (in proving priority a party must show conception of the invention by showing possession of every feature recited in the count at the time of alleged conception). We agree with the board that the evidence submitted by Geshwind, carefully examined, "merely shows that Geshwind had an idea or desired result in mind ... but fails to establish that he had a complete conception of the invention in issue ... any time prior to the filing date of the Rodesch patent." Board opinion at 4.

Since Geshwind's priority claim fails due to lack of proof of conception, we need not and do not address the issue of diligence on the part of Geshwind just prior to the filing date of Rodesch's patent.