heterogroups. Moreover, in generating the identified Z compounds, one would choose to focus on
those heterocycles assembled from the described acyclic reactants as opposed to the described the
iminomorpholine heterocyclic compounds described at col. 2, line 55 to col. 3, line 35, and employed
in the first example of the ‘146 patent. Having focused on the acyclic reactant produced heterocycles,
one skilled in the art would then understand that since 1,3,5-oxadiazine, 1,3,5-thiadiazine and 1,3,5-
triazines differ in only one specific reactant, that the compounds are fundamentally related. One skilled
in the art would also understand that “at least one of said three members being O, S and N-R ” guides 2
one skilled in the art to the conclusion that -CH -O-CH -, -CH -S-CH - and -CH -N(R )-CH - are 2
2 2 2 2 2 2
interchangeable and that possession of a 1,3,5-triazine intermediate compound conveys that Shiokawa
invented the claimed 1,3,5-oxadiazine subgenus. Further, Shiokawa assumes that one skilled in the art
would be guided to “pick and choose” the claimed R members (H, C alkyl and 2-chloropyridin-5-2
1-4
2 12
ylmethyl) from among the R members of the genus and preferred subgenus. We are not convinced
that the ‘146 patent directs or guides one skilled in the art to make these assumptions.
12The ‘146 patent does not mention the specific definition of the R moiety as it is presented in2
claim 1. We note that originally filed claim 1 defined R group as representing a hydrogen atom, a C2
1-4
alkyl group, a C alkoxy or a specific class of aromatic compounds. (SX 2037, p. 35). Originally
1-4
filed claim 2 defined the R group as representing a C alkyl group, a C alkoxy group or 2-2
1-3 1-3
chloropyridin-5ylmethyl. Additionally, we note that claim 15, added in a preliminary amendment (SX
2006), defined the R group as “a hydrogen atom or a C alkyl group.” Claims 1, 2 and 15 were2
1-4
rejected by the examiner under 35 U.S.C. § 112 first and second paragraphs. (SX 2007, pages 6-7).
Shiokawa, among other things, added new claim 18 in an amendment responding to the examiner’s
office action. (SX 2037, pages 132-133). Claim 18 seems to be the first appearance of the specific
definition of the R moiety as it presented in claim 1 of the ‘146 patent.2
37
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