insufficient to establish a practical, i.e., in vivo, utility
for the compounds. Our decision in both instances is based on
the evidence brought to our attention and a recognition that
Huang has the burden of proof both in its preliminary motion 1
(37 CFR § 1.637(a)) and in establishing priority of invention
(37 CFR § 1.657(a)).
(1) As noted above, statements made by Prasit in its
specification regarding utility and enablement are presumed
correct unless there is reason to question the objective truth
of those statements. 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 note
that Huang does not attack the sufficiency of the in vitro
testing found in the '931 disclosure and states that it
disagrees with Merck testimony in other interferences
indicating that, in some cases, in vitro activity alone is
insufficient to make reliable predictions concerning in vivo
effectiveness of compounds alleged to possess anti-
inflammatory, antipyretic and analgesic activity (Paper 47 at
4). Huang argues that Prasit should be held to the Merck
testimony from the other interferences in this interference
under principles of estoppel even though Huang disagrees with
40
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