2-chloropyridin-5- 2-chloropyridin-5-ylmethyl heterocyclic nitrogen
ylmethyl compound (see SX 2003,
col. 1, lines 35-42)
C alkoxy group C alkoxy group
1-3 1-4
As apparent from Table 1, Shiokawa claim 1 is both narrower and broader than the preferred genus.
The ‘146 patent, however, does not guide one skilled in the art to make the selections that are required
to arrive at the subject matter of claim 1.
ii. Shiokawa Makes Numerous Assumptions in Order to Demonstrate
that the ‘146 Patent Guides One Skilled in the Art to the Claimed
1,3,5-Oxadiazines
Shiokawa contends that claim 1 of the ‘146 patent is sufficiently described and enabled such
that claim 1 is a constructive reduction to practice of the subject matter of the count. In making this
argument Shiokawa’s Preliminary Motion 1 and Dr. Pearson’s supporting declaration testimony (SX
2001) subject one skilled in the art to an intricate and imaginative combination of assumptions that are
more akin to a labyrinth than a well marked path. For example, Shiokawa and Dr. Pearson make the
following assumptions:
(1) One skilled in the art would focus on the Z group and would “most likely” have begun
generating compounds having one oxygen atom and repeat the procedure with a sulfur and N-
R group for Z. (Paper No. 75, pages 13-14 and SX 2001, ¶27).2
33
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