Interference No. 103378
720, 112 USPQ at 475.
It is also recognized that utility can be established by other than by actual
testing if sufficient properties of that compound are determined such that the
sought-for-utility is readily apparent, as by demonstrating a similarity of properties
of the new compound to established properties of a known class of compounds
having a known utility. Ciric v. Flanigen, 511 F.2d 1182, 1185, 185 USPQ 103,
105 (CCPA 1975); Anderson v. Natta, 480 F.2d 1392, 1395-96, 178 USPQ 458,
460 (CCPA 1971); Richardson v. Cook , 442 F.2d 1398, 1400-01, 170 USPQ
86, 88 (CCPA 1971); Fang v. Hankins , 399 F.2d 262, 269, 158 USPQ 345, 351
(CCPA 1968); Bindra v. Kelly, 206 USPQ 571, 575 (Bd. Pat. Int. 1979).
Opinion
We hold that party Brooks has not proved an actual reduction to practice
of the subject matter of count 3 because Brooks failed to establish a practical
utility for A-79935 prior to November 27, 1990.
Here the count is trifurcated and the compound portion of the count does
not recite a specific utility. Brooks rely upon the utility disclosed in their
application. According to the Brooks disclosure, the compounds of the count
inhibit lipoxygenase enzymes, and in particular, 5-lipoxygenase (5-LO). These
enzymes are the first step in the pathway leading to the production of leukotriene
products. Leukotriene products are potent substances with diverse actions which
produce a wide variety of biological effects, often in an extremely small
concentration range. Alterations in leukotriene metabolism have been
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