reader would, based upon various assumptions, know which trails to follow and where to jump off the
trail in order to arrive at the location of the claimed 1,3,5-oxadiazines and would proceed to redraw the
boundaries of the forest to set apart those general and preferred areas of the forest that fall within the
claimed 1,3,5-oxadiazine subgenus.
Shiokawa has failed to convince us that the reader of the ‘146 patent map is directed or guided in such
a fashion.
i. Shiokawa’s Claimed 1,3,5-Oxadiazine Subgenus is Narrower than
Shiokawa’s Genus and Both Broader and Narrower than Shiokawa’s
“Preferred” Subgenus
Shiokawa ‘146 provides a description of a genus and a preferred subgenus of insecticidal
heterocyclic compounds. As shown below in Table I, the 1,3,5-oxadiazine compounds of Shiokawa
‘146 claim 1 differ from, and do not fall within, the preferred subgenus.
TABLE I
‘146 PATENT
COMPARISON OF CLAIM 1, PREFERRED GENUS AND GENUS 1
Substituent of Claim 1 Preferred Genus Genus
Formula 1
Z -CH -O-CH - three-membered straight three-membered straight
2 2
chain, each member being chain, each member being
selected from the group selected from the group
consisting of CH , O, S and consisting of CH , O, S and
2 2
N-R with at least one of2 N-R with at least one of2
said three members being said three members being
O, S or N-R 2 O, S or N-R 2
E N-R 2 N-R 2 N-R 2
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