Interference No. 103378
demonstrated in a number of disease states including “asthma, allergic rhinitis,
rheumatoid arthritis and gout, . . . and central nervous system pathology resulting
from the formation of leukotrienes following stroke or subarachnoid hemorrhage”.
(see particularly, column 1, lines 50-58 for a complete listing of all the disease
states). Thus, inhibition of the 5-LO enzyme provides an approach to limit the
effects of all the products of this pathway and the compounds which so inhibit 5-
LO are said to be useful in the treatment of disease states in which leukotrienes
play an important role. (See column 1, lines 17-20 and 50-66 of the involved
Brooks patent).
To prove a reduction to practice, Brooks must show that “the embodiment
relied upon as evidence of priority actually worked for its intended purpose.”
Newkirk v. Lulejian, 825 F.2d 1581, 1582, 3 USPQ2d 1793, 1794 (Fed. Cir.
1987). Thus, while Brooks urges that it is obvious that compounds of the count
would be 5-LO inhibitors, our focus is specific to whether Brooks established that
5-LO inhibitor activity of A-79935 could be foretold with certainty without testing.
In our view, the situation here, like that in Fisher v. Bouzard, 3 USPQ2d
1677, 1681 (Bd. Pat. App. & Int. 1987); DeSolms v. Schoenwald, 15 USPQ2d
1507, 1510-11 (Bd. Pat. App. & Int. 1990) and Bigham v. Godtfredsen, 222
USPQ 632, 636 (Bd. Pat. Int. 1984), is analogous to that in Blicke v. Treves, 241
F.2d at 720-21, 112 USPQ at 475. In the Blicke case, Blicke urged that making
the new compounds in issue, without testing, was sufficient to establish a
reduction to practice because the compounds, which were said to be
antispasmodic agents, in the Blicke application, were “of a kind known to be
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