Interference No. 104,241
within the genus of compounds defined by the count constitutes
a reduction to practice of the invention defined by the count
for purposes of priority of invention in an interference
proceeding. Breuer v. DeMarinis, 558 F.2d 22, 24, f.n. 5, 194
USPQ 308, 309, f.n. 5 (CCPA 1977); Mikus v. Wachtel, 504 F.2d
at 1152, 183 USPQ at 753; Den Beste v. Martin, supra.
Accordingly, in order to prove they were prima facie
entitled to judgment relative to Cupps et al. based on an
actual reduction to practice before Cupps et al. effective
filing date, Jeon et al. were required to prove that they: (1)
actually prepared any single compound within the scope of the
count (or a pharmaceutical composition comprising a safe and
effective amount of a compound within the scope of the count
or a method for preventing or treating various diseases
comprising administering a safe and effective amount of a
compound within the count): (2) appreciated that the compound
prepared by them was the compound they sought to prepare; and
(3) adequately tested the compound prepared to establish that
the compound possessed a practical utility.
In their submission under 37 C.F.R. § 1.608(b) filed with
the primary examiner, Jeon et al. attempted to prove that Yoon
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