Interference No. 103,272
Here, since the count does not specify any particular utility, any showing of
utility is sufficient to establish actual reduction to practice. The party Okamoto does not
dispute that the witnesses testified that a para-cumyl phenol endcapped polycarbonate
resin meeting the limitations of the count was produced. Rather, the party Okamoto urges
that the para-cumyl phenol endcapped polycarbonate resin has not been shown to be
useful, since no compact disc was made. While Dr. Cooper testified that the resin was
made into a compact disc shortly after the resin was produced on July 14, 1987, he did not
testify as to the exact date the disc was made. Nor does the Heuschen record indicate
any such date. Nonetheless, the witnesses
(Dr. Cooper and Dr. Heuschen) testified that sufficient properties of the para-cumyl phenol
endcapped polycarbonate resin were determined from the ductile testing to show that the
resin was equivalent and in some cases better than the para-tertiary butyl phenol
endcapped polycarbonate that was being used for compact discs. Based on this data, the
witnesses concluded that the para-cumyl phenol endcapped polycarbonate resin would be
useful for making a compact disc. We find this testimony persuasive to establish reduction
to practice. Utility can be established by determining sufficient properties of a resin such
as here to show that the sought for utility is readily apparent. Bindra v. Kelly, 206 USPQ
570, 575 (Bd. Pat. Int. 1979). Here, the tests demonstrate a similarity of properties of the
new resin (para-cumyl phenol endcapped polycarbonate resin) to the established
properties of the known para-tertiary butyl phenol endcapped polycarbonate resin.
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