An inventor can establish an actual reduction to practice
if it is shown that: (1) the inventor constructed an
embodiment or performed a process that met all the limitations
of the interference count; and (2) the inventor determined
that the invention would work for its intended purpose.
Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901
(Fed. Cir. 1998). Where an interference count is not limited
to an intended purpose or to discovered properties of the
claimed compounds, evidence establishing substantial utility
for any purpose is sufficient to show reduction to practice.
Fujikawa v. Wattanasin, 93 F.3d 1559, 1564, 39 USPQ2d 1895,
1899 (Fed. Cir. 1996). An alternative of the count in this
interference is a compound with no limitation as to the
intended utility of the compound (e.g., Huang claim 1). In
the present circumstances therefore, Huang must establish that
the Huang inventors actually made the invention defined by the
compound alternative of the count, recognized it for what it
was, and knew it would work for some practical utility. Estee
Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 592, 44 USPQ2d
1610, 1613 (Fed. Cir. 1997). When testing is required to
establish utility, there must be some recognition of
successful testing for a reduction to practice to have
occurred. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d at
24
Page: Previous 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Next
Last modified: November 3, 2007