Appeal from an interference proceeding in which the Board of Patent Interferences awarded priority to the senior party. The invention at issue involved 16-phenoxy-substituted prostaglandin (PG) compounds. The issue with regard to utility was whether testing the PG's for their stimulation of smooth muscle tissue from gerbil colons and their modulation of blood pressure in rats constituted a manifestation of practical utility, in order to establish actual reduction to practice. The Board found that these tests were merely “rough screens, uncorrelated with actual utility†and found that there was not enough evidence to show adequate proof of practical utility.
The court reversed the Board and awarded priority to the junior party. Noting that when no particular utility is recited, evidence of any utility is sufficient, the court held that “the board erred in not recognizing that tests evidencing pharmacological activity may manifest a practical utility even though they may not establish a specific therapeutic use.†The court also articulated the standard that “a rigorous correlation is not necessary where the test for pharmacological activity is reasonably indicative of the desired response.â€
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Saturday 06 of September, 2008 18:36:01 GMT by Unknown
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Thursday 18 of September, 2008 17:17:09 GMT by Unknown