art would have reasonably doubted the utility asserted. In re
Cortright,
165 F.3d 1353, 1357, 49 USPQ2d 1464, 1466 (Fed. Cir. 1999).
Therefore, Huang has the burden to show by a preponderance of
the evidence that one having ordinary skill in the art would
have doubted Prasit's assertion that the compounds it claims
are useful as COX-2 inhibitors. We hold that Huang has not
met its burden.
Huang argues that Merck should be bound by the testimony
of its witnesses, Dr. Chan and Dr. Riendeau, given in prior
interferences '845 and '873 to which Merck was a party.
According to Huang, the testimony is an admission by Merck
that the compounds of its '931 application lack utility and
enablement.
It is proper for Huang to rely upon the testimony given
by Dr. Chan and Dr. Riendeau in the '845 and '873
interferences.
37 CFR § 1.683(a). However, a review of the entire testimony
of
Dr. Chan and Dr. Riendeau indicates that their testimony
concerning the predictability of COX-2 inhibition from in
vitro testing was directed to the specific compounds described
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