Interference No. 103378
511 F.2d at 1185, 185 USPQ at 105, and In re Folkers, 344 F.2d 970, 974, 145
USPQ 390, 393 (Fed. Cir. 1965) (Usefulness of a compound is invariably a
manifestation of a given property of that compound and some uses can be
immediately inferred from a recital of certain properties). Accordingly, we hold
that A-79935 was not reduced to practice when it was prepared; rather, testing to
establish a practical utility was necessary.
The reliance on coinventor Brooks’ testimony is misplaced. His testimony
as to what he believed when he made the entry, “5-LO”, in his notebook, does
not establish an actual reduction practice but at best constitutes evidence of
conception of utility. Rey-Bellet, 493 F.2d at 1385-86, 181 USPQ at 457
(conception of NTL as an antidepressant by the inventor is sufficient to complete
the conception of utility because nothing beyond the exercise of routine skill
would have been required to demonstrate that it had this activity.)
Brooks argue that during the prosecution of each of the involved
applications and in the interference, no one ever stated that 5 -LO inhibitory
activity would not have been expected. This argument is not persuasive. The
standard used for determining whether an application satisfies 35 U.S.C. §101
and/or 35 U.S.C. §112 as to a sufficiently specific use differs from the standard
used in evaluation of whether the practical utility requirement has been satisfied
in proving a reduction to practice of a novel compound. An expectation that a
compound possesses a certain property does not establish that practical utility of
that compound could be foretold with certainty. A novel compound does not
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