Interference No. 102,408
practice requires a showing of three elements: (1) production
of a composition of matter satisfying the limitations of the
count, (2) recognition of the composition of matter, and (3)
recognition of a specific practical utility for the
composition. Estee Lauder Inc. v. L'Oreal S.A., 129 F.3d 588,
592, 44 USPQ2d 1610, 1613 (Fed. Cir. 1997) citing Standard Oil
Co. (Indiana) v. Montedison, S.p.A., 494 F. Supp. 370, 206
USPQ 676 (D. Del. 1980), aff'd, 664 F.2d 356, 212 USPQ 327 (3d
Cir. 1981); see also Hahn v. Wong, 892 F.2d 1028, 1032-33, 13
USPQ2d 1313, 1317 (Fed. Cir. 1989); Blicke v. Treves, 241 F.2d
718, 720, 112 USPQ 472, 475 (CCPA 1957) (whether a composition
of matter must be tested in order to establish an actual
reduction to practice, and if so, what tests are necessary
must be decided on a case-by-case basis). The evidence relied
on by junior party Child fails to satisfy these three
elements.
A. Compound no. 1
Kolar argues that the evidence submitted by Child does
not establish by a preponderance of the evidence that
"compound no. 1" was actually prepared and known to have
utility as an anti-cancer agent prior to the critical date.
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