Interference No. 104,745
'intended purpose' is not explicitly set forth in the counts of the interference. See, e.g., Elmore v.
Schmitt, 278 F.2d 510, 47 CCPA 958, 125 USPQ 653 (CCPA 1960); Burns v. Curtis, 172 F.2d
588, 36 CCPA 860, 80 USPQ 587 (CCPA 1949))." As this is clearly not a case where the
invention is so simple that it required no testing to determine its suitability for its intended
purpose, cf. King Instrument Corp. v. Otari Corp., 767 F.2d 853, 861, 226 USPQ 402, 407 (Fed.
Cir. 1985)("[s]ome devices are so simple and their purpose and efficacy so obvious that their
complete construction is sufficient to demonstrate workability.")(quoting Eastern Rotorcraft
Corp. v. United States, 384 F.2d 429, 431, 155 USPQ 729, 730 (Ct.Cl. 1967)), Bai must
demonstrate that the atmospheric-pressure ionization device was tested and found to have
worked satisfactorily for its intended purpose.
Laiko contends (1) that Bai's specification indicates that the intended purpose of the
recited "atmospheric-pressure ionization apparatus" is to generate and transport sufficient analyte
ions to a mass spectrometer for producing a mass spectrum of the analyte, and (2) that an actual
reduction to practice of such an apparatus requires connecting the AP-MALDI apparatus to a
mass spectrometer and producing a mass spectrum of the analyte. LOppBr 16-17, 47-50. In
support of the first contention, Laiko relies on the above-discussed statement in Bai's application
(at 1, ll. 19-27) that a "mass spectrometer generally contains . . . (5) a data processing system that
produces a mass spectrum of the analyte." LOppBr. 31. We agree with Laiko that this statement
is sufficient to establish that the intended use of the AP-MALDI apparatus is with a mass
spectrometer that produces mass spectra of analyte materials. However, it does not necessarily
follow that Bai was required to test the AP-MALDI apparatus with such a mass spectrometer in
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