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Cross v. Iizuka, 753 F.2d 1040, 224 U.S.P.Q. 739

Facts

The case involves an interference proceeding between two parties, Iizuka and Cross, regarding the priority of a patent application for imidazole derivative compounds that inhibit thromboxane synthetase. Iizuka claimed priority based on a Japanese application, while Cross claimed priority from a British application. The Board of Patent Interferences found that Iizuka's application sufficiently disclosed the utility and enablement of the compounds, leading to an appeal by Cross.

[The compounds disclosed] are useful for treatment of inflammation, thrombus, hypertension, cerebral apoplexy, asthma, etc.

Issue

Whether the utility disclosed in the Japanese priority application is sufficient to meet the practical utility requirement for patentability and whether it satisfies the enablement requirement.

Rule

The utility of an invention must be substantial or practical, and it cannot be considered useful unless such utility is discovered and disclosed. The enablement requirement necessitates that the application provides sufficient information for a person skilled in the art to use the invention without undue experimentation.

Analysis

The Board determined that the Japanese priority application disclosed sufficient utility for the imidazole derivatives as inhibiting agents for thromboxane synthetase. The evidence presented showed that the compounds had a strong inhibitory action, which met the practical utility requirement. The enablement requirement was also satisfied as the application provided adequate dosage information for skilled practitioners to utilize the compounds effectively.

The Board found that the Japanese priority application disclosed 'how-to-use' knowledge directed to the practical utility in a microsome system, and that microsome assays were admittedly known in the art. A skilled worker could determine the relative strength of the imidazole compounds of the count vis-a-vis the known parent imidazole and 1-methylimidazole compounds for use in the microsome assay milieu.

Conclusion

The Board's decision to award priority to Iizuka was affirmed, as the Japanese priority application met both the practical utility and enablement requirements.

The Board held that the Japanese priority application contained an adequate how-to-use disclosure for the practical utility stated therein.

Who won?

Iizuka prevailed in this case because the Board found that the Japanese priority application adequately disclosed the practical utility of the imidazole derivatives as inhibiting agents for thromboxane synthetase. The Board's analysis indicated that the evidence supported the conclusion that the compounds had significant pharmacological activity, which satisfied the legal standards for patentability.

The Board found that there was adequate proof that the Japanese priority application disclosed a pharmacological activity for the compounds of the phantom count in inhibiting the action of thromboxane synthetase.

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