Patent interference proceeding. Board awarded priority to senior party, and junior party appealed. Court affirmed, finding that junior party’s laboratory experiments did not constitute an actual reduction to practice. The invention at issue was a stabilized polyethylene composition.
In analyzing whether the junior party established an actual reduction to practice, the court first asked “what was the practical use to which appellant intended to put his invention� Id. at 751. Although no stated utility appeared in the claims, the court analyzed the specification, along with the junior party’s brief and testimony, for a statement of utility. The court stated, “{w}e have reviewed the record in order to find substantial utility for any purpose and conclude therefrom that the intended purpose was to use the composition as pigmented electrical wire insulation.†Id. at 751.
The court then proceeded to the ultimate question of “whether the laboratory tests establish that the composition . . . will perform successfully as pigmented electrical wire insulation.†The court found that the tests did not establish this utility. The court found “the absence of either actual service tests or positive correlation between that and simulated tests†to be determinative. Id. at 752. Rather, the court required proof “that it is reasonably certain that the invention will perform its intended function in actual operation.†Id. at 752-53.
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Tuesday 28 of October, 2008 13:11:45 GMT by Unknown
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