(SX 2003, col. 1, lines 18-63). The ‘146 patent specifically names three intermediate heterocyclic
structures encompassed by formula (III) (3-cyano-iminomorpholine, 3-nitroiminomorpholine, and, 1,3-
5-triazine) and how they can be obtained. (SX 2003, col. 2, line 55 to col. 3, line 53 and examples 1
and 5-7). Furthermore, the compounds depicted in Table 1 of the ‘146 patent would be formed from
the three named intermediate heterocycles as well as from others. With the exception of those falling
within the preferred subgenus, the ‘146 patent does not identify the named, exemplified or depicted
intermediate heterocycles as preferred. Furthermore, as noted above, the only exemplified intermediate
heterocycle that specifically formed a “preferred” compound of the invention was the 3-
cyanomorpholine described in example 1. Thus, while it may have been obvious to select the 1,3,5-
triazine heterocycles of formula (III) and modify them using the assumptions set forth in Shiokawa’s
Corrected Preliminary Motion 1 with the expectation that the resultant compound would possess
insecticidal properties, the ‘146 patent itself does not guide or direct one skilled in the art to make that
particular selection.
As explained in Lockwood, entitlement to a filing date does not extend to subject matter which
is not disclosed, but would have been obvious over what is expressly disclosed. Lockwood, 107 F.3d
at 1571, 41 USPQ2d at 1966. The following discussion provides a glimpse at the number of
assumptions that Shiokawa alleges one skilled in the art would “implicitly” find in the ‘146 patent. For
example, Shiokawa assumes that one skilled in the art would be implicitly directed to focus upon the Z
group of the described insecticidal heterocyclic compounds as opposed to the A, R , E, X and Y1
moieties. Shiokawa also assumes that one skilled in the art would then be implicitly guided to generate
those compounds where Z is formed from two methyls and one heteroatom or heterogroup, O, S, or
N-R as opposed to those compounds where Z is formed from two or three heteroatoms or2
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