Interference No. 104,290
Secondly, LeVeen argues that Hansen's testimony is
irrelevant as based on a faulty legal conclusion that for a
reduction to practice of the subject matter of the count, a
successful test simulating or using the device in a living
subject must be shown. LeVeen's argument is based on the premise
that the count does not require the deployment or use of the
device in living tissue. However, the case cited by LeVeen
does not support LeVeen's argument. LeVeen cites Koval v.
Bodenschatz, 463 F.2d 442, 447, 174 USPQ 451, 455 (CCPA 1972).
While the case states that requirements derived from the objec
tives of one of the parties that are not reflected in limitations
embodied in the count ordinarily cannot be imposed on an asserted
actual reduction to practice, 9 Koval affirmatively requires a
relationship between the test conditions and the intended
functional setting of the invention. Id. (citing Knowles v.
Tibbets, 347 F.2d 591, 594, 146 USPQ 59, 61 (1965); Volsinet v.
9 In this instance, it appears that use in the organs of a
living subject is an objective of both parties. See, for exam
ple, LX-1002 at 8, lines 19 and 20: "treatment region may be
located anywhere in the body" or "will comprise a solid tumor
within an organ of the body" and EX-5004, col. 4, line 43-44,
"the delivery catheter is advanced percutaneously to an internal
body organ or site."
9
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