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Keywords

appealpatentsustained

appealpatenttrademarksustained

Related Cases

Nelson v. Bowler, 626 F.2d 853, 206 U.S.P.Q. 881

Facts

This case involves a patent interference proceeding between Nelson and Bowler regarding the priority of invention for 16-phenoxy-substituted prostaglandins. Nelson filed an application for a composition and process in 1972, while Bowler filed a continuation application in 1974. The Board of Patent Interferences awarded priority to Bowler, but Nelson appealed, arguing that he had established practical utility for his compounds through pharmacological tests. The tests indicated smooth muscle stimulation and blood pressure modulation, which Nelson claimed demonstrated the compounds' utility.

This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Patent Interferences (board) awarding priority on all four counts to Bowler et al. (Bowler), the senior party. We reverse.

Issue

Did Nelson demonstrate at least one utility for counts 1, 2, and 4 that sufficiently establishes an actual reduction to practice before the critical date of May 11, 1971?

Rule

In patent law, evidence of any utility is sufficient to establish practical utility, even if the counts do not recite a specific utility. Adequate proof of pharmacological activity constitutes a showing of practical utility, and rigorous correlation between test results and therapeutic use is not necessary if the tests are reasonably indicative of the desired response.

Analysis

The court analyzed the tests conducted by Nelson, specifically the rat blood pressure test and the gerbil colon smooth muscle stimulation test. It concluded that these tests provided sufficient evidence of pharmacological activity, which is indicative of practical utility. The court found that the board erred in dismissing the tests as inconclusive and that the pharmacological activities demonstrated by the tests were recognized as practical utilities.

Conclusion

The court reversed the board's decision, holding that Nelson had sustained his burden of proving a prior actual reduction to practice.

Who won?

The court reversed the decision of the Board of Patent Interferences, thereby favoring Nelson. The court found that the evidence presented by Nelson, particularly the pharmacological tests demonstrating smooth muscle stimulation and blood pressure modulation, was sufficient to establish practical utility for the 16-phenoxy-substituted prostaglandins. The board's conclusion that these tests did not show adequate proof of practical utility was deemed incorrect.

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