where B is O, S, or N-R and E is a nitrogen group. The ‘146 patent does not seem to mention a2
“special interest” in the Z group or identify compounds where Z is -CH -O-CH -, -CH -S-CH - and - 2 2 2 2
CH -N(R )-CH - as representing a specific class of compounds. Nor does the ‘146 patent mention a2
2 2
preference for those compounds having an N(R ) group for E as opposed to a CH , O or S moiety.2
2
Shiokawa, and Dr. Pearson, have failed to sufficiently identify the guidance provided in the ‘146 patent
that leads to the proposed classification scheme.
Additionally, Dr. Pearson has explicitly represented that the ‘146 patent teaches one skilled in
the art that “the heteroatoms or heterogroups CH , O, S, or N-R are interchangeable” in the E2
2
14 2
position. (SX 2001, ¶17). Yet, substituting CH , O, S for the N-R moiety in Group I leads to
2
compounds outside the scope of Shiokawa’s claims. Thus, if Dr. Pearson’s “interchangeability”of E
were correct, one skilled in the art would not necessarily be directed to the claimed 1,3,5-oxadiazines
where E is N-R . 2
14During cross-examination deposition, Dr. Pearson testified that:
Right below that there is another generic structure. This is in the middle-right of Table 1
[p. 9 of Dr. Pearson’s Declaration SX 2001], where E, again, would be oxygen. I
don’t think that the ‘146 patent provides enough information to make such a
compound, and based on the literature that I am familiar with, I would like to say there
may be some really great way to do this out there that I don’t know, but sitting here
today, I doubt that there is a compelling body of literature that would lead me to believe
that compound is implicitly described.
(MX 1037, Deposition of Dr. Pearson, p. 124). Thus, according to Dr. Pearson, replacing one E
substituent with another E substituent can lead to compounds that one skilled in the art may be unable
to synthesize.
40
Page: Previous 35 36 37 38 39 40 41 42 43 44 45 46 47 48 49 Next
Last modified: November 3, 2007