Interference No. 103378
antispasmodics”. The court disagreed and held that tests were required. It
said:
It is evident that, while the antispasmodic properties of a new material
might be reasonably deduced from its similarity to known antispasmodics,
they could not be foretold with certainty; and that fact is apparent from the
record here which shows that appellant and his associates subjected the
new material to very extensive tests.
For the reasons given, we hold that the instant compounds are not of
such a nature that they were reduced to practice merely by making them.
Id. at 475.
In the instant case, A-79935 is a novel compound said to have
pharmacological activity as a 5-LO inhibitor. However, it has not been shown
that 5-LO inhibitor activity could have been “foretold with certainty” based on
structural similarity of A-79935 to other known N-hydroxyurea and hydroxamic
compounds, known as 5-LO inhibitors. Kreft’s assertion that the N-hydroxyurea
and hydroxamic acid portion of the molecule is responsible for 5-LO inhibitor
activity is not supported by evidence. It is not sufficient to establish a reduction
to practice for an expert to assert an opinion that one of ordinary skill in the art
would have expected a novel compound to have practical utility based on
structural similarity. Blicke, 241 F.2d at 720-21, 112 USPQ at 475. Kreft alleges
that “hydrophobicity” is a common property of the known N-hydroxyurea and
hydroxamic acid 5-LO inhibitors and A-79935. However, Brooks have not
pointed to any evidence to establish that “hydrophobicity” is a significant property
contemporaneously uncovered and appreciated by Brooks which is common to
both compound A-79935 and other known 5-LO inhibitors and that such
knowledge of this specific property would lead one of ordinary skill in the art to
foretell with certainty that A-79935 is useful as a 5 -LO inhibitor. See Ciric,
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