Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 15
A. Yes.
Q. That's in your writing, too?
A. Yes.
Q. Same with the eleven quats: Need only six; is that right?
A. Yes.
[NR, p. 90, 1. 22 - p. 91,1. 6.]
I. analysis of evidence
Notebook Ex 2030 may well show reactions and products that Dr. Nichols
desired and theoretically expected to occur. However, Ex 2030, taken alone, is
insufficient to establish that the predicted reactions and theoretically expected products
did in fact occur. NIVIR scan Ex 2031 is of no probative value because it is neither
authenticated nor explained. Moreover, Dr. Nichols testified that one could not tell the
structure of a compound from its NIVIR spectrum alone. No other spectral data (e.g.,
mass spectral or "much more sophisticated NMR" data), etc., have been offered for
compound 94A-64-11. Thus, Nichols' alleged synthesis of (NN-diethyl)-4-ureido-5,7
dichloro-2-carboxy-quinoline methyl ester) rests on the uncorroborated testimony of Dr.
Nichols. To prove reduction to practice by inventor testimony, the inventor's testimony
must be corroborated by independent evidence. Slip-Trac , 304 F.3d at 1265, 64
USPQ2d at 1429; Coope , 154 F.3d at 1330, 47 USPQ2d at 1903.
In addition, while an inventor need not know that his invention will work for
conception to be complete, the discovery that it actually works is part of its reduction to
practice. Burrouclhs Wellcome Co. v. Barr Lab., 40 F.3d 1223, 1228, 32 USPQ2d
1915, 1919 (Fed. Cir. 1994). Here, Nichols has not met its burden of showing that
compound 94A-64-11 would work for its intended purpose. No anticonvulsant or other
pharmacological activity testing has been offered for compound 94A-64-11. Simply
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