Blicke v. Treves

Blicke v. Treves
241 F.2d 718
Bluebook cite
Blicke v. Treves, 241 F.2d 718 (C.C.P.A. 1957).
241 F.2d 718
Item Type
Appeal from decision of the Board of Patent Interferences awarding priority to the senior party. The invention at issue involved chemical compounds. At issue was whether the junior party’s work, which occurred prior to that of the senior party’s, amounted to a reduction to practice. This issue was resolved by the court in two stages; first, by analyzing whether tests were necessary to establish utility, and thus a reduction to practice, and second, by analyzing whether the tests that did occur were sufficient to establish utility, and thus a reduction to practice.

With regard to the requirement of testing to establish utility, the court stated that “the invention of . . . a composition {of matter} is not complete unless its utility is either obvious or is established by proper tests, regardless of whether the claims contain any specific reference to utility.” Id. at 720. The court held that the utility of the invention at issue could not be foretold with reasonable certainty, and thus tests were required to establish utility.

With regard to the tests that did occur, the Board had determined (based solely on testimony by the junior party) that the only field of utility disclosed by the junior party was human therapy, and had thus not allowed tests performed by the junior party on animals to establish utility. The court, however, found no mention of human therapy in the junior party’s application, instead finding explicit references to animals and animal organisms. Thus, the court stated that “the utility alleged is of a pharmacological nature as distinguished from the actual curing of a disease. Accordingly, when the production of the desired pharmacological effect, without objectionable after effects is shown, utility is sufficiently established. We find nothing in the record to require a holding that such effect must be established by tests on human beings as distinguished from animals.” Id. at 722. Thus, the court found it “unnecessary to consider whether the tests were sufficient to show that the compounds had utility in human therapy” and reversed the decision of the Board, finding that the tests completed by the junior party had established utility, and thus a reduction to practice.

Excerpts and Summaries

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