Archer v. Papa

Archer v. Papa
265 F.2d 954
Bluebook cite
Archer v. Papa, 265 F.2d 954 (C.C.P.A. 1959).
265 F.2d 954
Item Type
Patent interference proceeding. USPTO Board awarded priority to senior party, because junior party’s proof of actual reduction to practice was deficient in that he had failed to establish practical utility. Junior party appealed. The invention at issue was a compound that aided in roentgenographic examination of the gall bladder.

The court framed the utility issue as follows: “Do tests showing a successful use of a compound, which use is only a step towards the ultimate intended use of that compound, constitute a showing of utility sufficient to establish an actual reduction to practice, when the count itself states no purpose and the specification is limited to the use disclosed in those tests?” Id. at 957.

Further, the court summarized the facts of the case as follows: “It is apparent that appellant's ultimate objective was to establish that this compound would be an effective cholecystographic agent to diagnose human gall bladder diseases; that the preliminary experiments determined only that the compound could be used to cause the gall bladder of a cat to appear as an opaque shadow on a cholecystogram; that no toxicity was observed in cats and that acute oral toxicity tests were performed on mice with satisfactory results; and that the appellant framed his application to cover only that which had been actually accomplished, without regard to his ultimate objective.” Id. at 957.

The court reversed the board’s rejection, finding utility based on the successful laboratory tests in cats. The court noted that “the inventor’s ultimate purpose need not be achieved in order to establish utility required for a reduction to practice.” Id. at 958.

Excerpts and Summaries

Sunday 02 of November, 2008 22:01:04 GMT
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Sunday 02 of November, 2008 22:01:04 GMT
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