HUANG et al. V. PRASIT et al. - Page 10




              Huang request for reconsideration of the denial of Huang                
                                preliminary motion 1                                  
                    19. Huang preliminary motion 1 was denied in an                   
          order entered 23 December 1999 (Paper 35).                                  
                    20. Huang asks for reconsideration of the denial of               
          its preliminary motion 1. 37 CFR § 1.655(a)(Paper 47).                      
                    21. Huang argues that the Prasit claims are                       
          unpatentable under 35 U.S.C. §§ 101 or 112, 1st paragraph, on               
          the basis of what is said to be an admission against interest               
          made by Merck in copending interferences 103,845 ("'845") and               
          103,873 ("'873").                                                           
                    22. According to Huang, Merck, the real party                     
          interest of Prasit, made an admission that in vitro testing                 
          alone is insufficient to make reliable predictions concerning               
          in vivo effectiveness in compounds alleged to possess anti-                 
          inflammatory, antipyretic, and analgesic activity.                          
                    23. The following testimony by Merck witnesses                    
          during the '845 and '873 interferences is said to be evidence               
          of the Merck admission:                                                     
                    (a) the testimony of Dr. Chi-Chung Chan that:                     
                    (1) "In vitro inhibition of COX-2 is necessary,                   
               but considered alone, is not sufficient to make                        
               reliable predictions concerning in vivo                                
               effectiveness of compounds and takes no account of                     
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