Furman has not shown that the Furman inventors determined that the compounds of count 2 or
count 3 would work for their intended purpose. Furman concedes that the separate enantiomers
of BCH-189 were not tested until July of 1991. (FF59). Furman has not sufficiently exp P lained
why a reduction to practice of the count 2 and 3 compounds did not require successful testing.
We need not and do not determine whether the July 1991 testing itself amounted to a
reduction to practice of a compound within the scope of count 2 or count 3 since the testing
occurred after Furman's constructive reduction to practice date of 2 May 1991."
IV. Conclusion
Asjunior party in the interference, Furman has the burden of proving priority by a
preponderance of the evidence. 3 7 CFR § 1.65 7(b). Furman has not met its burden.
Accordingly, we need not and do not consider Belleau's principal brief on the issue of priority
(Paper 90).
Furman has not sufficiently shown that it either (1) reduced the invention of the counts to
practice prior to Belleau or (2) conceived the invention of the counts prior to Belleau and then
exercised reasonable diligence in later reducing the invention to practice. Since Furman has not
shown priority as to any count, we need not and do not decide whether the subject matter of
either count 2 or count 3 is separately patentable from the subject matter of count 1.
Accordingly, it is appropriate to award priority against Furman as to count 1, count 2 and
count 3.
19 For example, we need not and do not determine if the July 1991 testing actually
showed activity for the (-) enantiomer of count 2 and count J.
36
Page: Previous 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 Next
Last modified: November 3, 2007