Interference No. 103378
have an established utility and thus testing must occur to establish practical
utility.
Brooks argue that for determining whether practical utility has been
demonstrated, the relevant person is “one of skill in the art” not “one of ordinary
skill in the art.”(original emphasis) This argument is not persuasive. In our view,
“one of skill in the art” and “one of ordinary skill in the art” are one and the same
person(s).
Brooks' contend that “[A]ll that is required for actual reduction to practice is
that it be shown that it be ‘reasonably certain’ that the subject matter will perform
its intended function in actual service…” Gellert v. Wamberg, 495 F.2d 779, 782-
83, 181 USPQ 648, 651 (CCPA 1974) , citing Chittick v. Lyons , 104 F.2d 818,
820, 42 USPQ 132 , 134 (CCPA 1939)(emphasis added in Gellert).(BB-42)
Brooks' reliance on the decisions of Gellert and Chittick is misplaced. In the
instant interference, no testing was conducted before the critical date, whereas
in Gellert and Chittick tests were in fact conducted on the constructed
embodiments and from the test results it was concluded that one of ordinary skill
would be “reasonably certain” that the invention would have worked as intended.
The reasonableness standard in determining practical utility addresses whether
the testing conducted is sufficient to prove usefulness, not whether utility is
obvious or would have been expected without testing.
For the foregoing reasons, we hold that Brooks et al. have not established
a reduction to practice of the subject matter of the count, and thus Ikeda et al, as
senior party, must prevail.
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