Cross v. Iizuka

Cross v. Iizuka
753 F.2d 1040
Bluebook cite
Cross v. Iizuka, 753 F.2d 1040 (Fed. Cir. 1985).
753 F.2d 1040
Item Type
Appeal from decision of Patent Office Board of Interferences awarding priority to senior party. The count involved was directed to imidazole derivative compounds. The issue with regard to utility was whether a practical utility was disclosed in a Japanese patent application, to which the senior party claimed priority.

The court began its analysis of the utility issue by noting that “a thorough analysis of the utility issue requires first, a determination as to what utility is disclosed, i.e., the stated utility, for the invention claimed in the application. Only after the stated utility has been determined, can a proper analysis be undertaken to determine if the stated utility complies with the “practical utility” requirement of § 101.” Id. at 1044 n. 8. Additionally, the court noted that “{w}here a constructive reduction to practice is involved, as contrasted to an actual reduction to practice, a practical utility for the invention is determined by reference to, and a factual analysis of, the disclosures of the application.” Id. at 1044.

With regard to stated utility, the Board had determined that the application disclosed a utility in the inhibition of thromboxane synthetase in human or bovine platelet microsomes (an in vitro utility). The court, differing to the Board for factual determinations and finding credible evidence to support this finding, affirmed the Board’s finding as to a stated utility.

With regard to the practical utility requirement of § 101, the court characterized the junior party’s argument as “that the minimum acceptable level of utility disclosed in an application claiming a compound having pharmacological activity must be directed to an in vivo {within an living organism} utility in order to comply with the practical utility requirement of § 101” and that in vitro {outside a living organism; an artificial environment such as a test tube} utility is not enough. Id. at 1046. The court disagreed with the junior party, finding a reasonable correlation between in vitro and in vivo testing to be enough to satisfy the practical utility requirement.

Excerpts and Summaries

Sunday 07 of September, 2008 16:12:37 GMT
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Wednesday 10 of September, 2008 13:44:43 GMT
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