Interference No. 103378
record. 2 (IR 15 and 16). Ikeda and Brooks could not decide priority between
them and submitted to the Board a single issue for determination.3 To wit, have
Brooks established an actual reduction to practice as of November 16, 19904
when Rodriques made a compound within the scope of the count or at a later
date when testing occurred as asserted by Ikeda.
The Brooks record consists of the affidavit testimony of Clint Dee W.
Brooks, Michael Meyer, Douglas H. Steinman, Randy L. Bell, Karen E.
Rodriques, Dr. Anthony Kreft, Robert L. Rosati and Elias J. Corey and the
associated exhibits attached to each of these affidavits, excerpts from the
involved Brooks, Hodgson, and Ikeda applications, and the involved U.S. Patent
No. 5,187,192 issued to Brooks.
Brooks case for priority
Rodriques, a named inventor, testified that on November 13, 1990, she
prepared a preparation of N-[3-phenylcyclobutyl]-N-hydroxyurea, which was
2 The Brooks record, brief and exhibits will be referred to herein as BR, BB, and
BX, respectively.
3 Party Brooks does not raise the issue of prior conception coupled with
reasonable diligence to filing of its application. Therefore, this issue is deemed
abandoned. Photis v. Lunkenheimer, 225 USPQ 948, 950 (Bd. Pat. Int. 1984). See also
Estee Lauder Inc. v. L' Oreal, 120 F.3d 588, 592-93, 44 USPQ2d 1610, 1613 (Fed. Cir.
1997) (where our reviewing court stated that the district court could not examine, absent
compelling circumstances, evidence directed to an issue not raised before the board).
4 Brooks’ preliminary statement indicates that the earliest date relied upon for a
reduction to practice is November 16, 1990. (See Paper No. 35, and Statement of
Reliance, Paper No. 97). See 37 C.F.R. § 1.629(b) which states: [E]vidence which
shows that an act alleged in the preliminary statement occurred prior to the date alleged
in the statement shall establish only that the act occurred as early as the date alleged in
the statement.
3
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