Summary of the Opinion
Notwithstanding the numerous issues and subissues raised by the parties, this interference in
simplest form involves only two questions. First, is Shiokawa entitled to the benefit for the purposes of
priority of the filing dates of its earlier Japanese (JP) and U.S. applications. Secondly, does
Shiokawa’s published Japanese application JP 1-54943 (JP ‘943) or Shiokawa U.S. Patent 5,032,589
(‘589 patent) anticipate or render obvious Maienfisch’s claimed 1,3,5-oxadiazines.
As to the first question, Shiokawa’s earlier applications do not describe the subject matter of
the count, thus, for purposes of priority, Shiokawa is not entitled to the benefit of the filing dates of the
earlier JP and U.S. applications. As stipulated by the parties, since Shiokawa is not entitled to the
priority benefit of the filing date of its earlier applications, Maienfisch’s published European patent
application EP 580,553 anticipates, and renders unpatentable, the claims of the ‘146 patent under 35
U.S.C. § 102(b). (Stipulation, Paper No. 28, p. 1). Additionally, as noted during oral argument, there
would be no priority testimony in this interference proceeding, i.e., a decision on Shiokawa’s priority
benefit determines the outcome on priority of invention. Accordingly, as Shiokawa is not entitled to the
benefit of its earlier filing dates, Maienfisch prevails on priority of invention.
As to the second question, to the extent that Shiokawa’s JP ‘943 and U.S. ‘589 disclosures
may suggest that certain classes of heterocyclic compounds, such as Maienfisch’s claimed oxadiazines,
would be effective as insecticides, Maienfisch, has presented credible and convincing evidence of
unexpected results for its claimed 1,3,5-oxadiazines. Accordingly, we conclude that Shiokawa has
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