the testimony. We hold that there is no estoppel since the
Merck testimony was limited to compounds found in application
not involved in the present interference. We have no reason
to further examine the sufficiency of the testing relied upon
by Prasit to establish utility and enablement in the '931
application because Huang has not otherwise challenged those
tests. Huang has not shown that the in vitro testing of the
Prasit '931 application would have been inadequate for
purposes of enablement and utility of the '931 claims.
(2) To establish priority, Huang relies, in part, upon
in vitro testing done by Koboldt. Huang has the burden of
proving an actual reduction to practice of an embodiment of
the count, which includes recognition of a practical utility
for the embodiment, prior to Prasit's constructive reduction
to practice date of 29 August 1994. As noted above, evidence
of in vitro activity in combination with a known correlation
between in vitro and in vivo activity may be sufficient to
establish a practical utility; however, Koboldt's testimony
does not credibly establish the basis for her opinion that
there a known correlation between in vitro and in vivo
activity in COX-2 inhibitors, either generally or for the
compounds of the count. Accordingly, Huang has not shown that
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