Appeal from Interference proceeding, awarding priority to senior party. The subject matter of the counts related to certain monomeric acrylic acid and methacrylic acid esters of hydroxyalkyl oxazolidine compounds, polymers and copolymers of those monomers, and processes of preparing the monomers. On appeal, the junior party presented evidence of activities establishing reduction to practice, and thus priority. With regard to utility, the board had held that the junior party did prove that the compounds at issue had been prepared, but did not prove beyond a reasonable doubt that the compounds were useful. Specifically, the board stated that it “{did} not believe that the fact that a compound can be converted to a solid material (a polymer) without specifying what properties it may possess amounts to a showing of the utility of either the compound itself or the polymer.†Id. at 267.
The court affirmed the board, finding that the junior party had not demonstrated sufficient utility: “We cannot agree that the compositions of the counts were reduced to practice merely by making them in the present circumstances. Where, as here, no obvious usefulness satisfying the requirements of 35 U.S.C. § 101 would be apparent to one of ordinary skill from the record, we agree with the board that, without tests of an appropriate nature to determine the useful properties and to establish the usefulness of those polymers or copolymers, {the junior party} has not proved that the new and unobvious subject matter of the counts was in fact useful beyond a reasonable doubt at any time prior to the filing date of the {senior party’s} application fully describing the usefulness of the subject matter.†Id. at 267-68.
The court also concluded that the results of subsequent hardness and curing tests of the products did not establish utility, despite good results. In doing so, the court adopted the board’s justification that there was “no indication that {the junior party}, at the time the tests were run, considered these tests as showing that the {products} were satisfactory for their intended purpose. We do not believe that the record demonstrates that, at the time of his alleged reduction to practice, {the junior party} had a conviction of success.†Id. at 268.
Excerpts and Summaries
Created
Thursday 06 of November, 2008 23:06:50 GMT by Unknown
LastModif
Thursday 06 of November, 2008 23:06:50 GMT by Unknown