Shiokawa has assumed that the “interchangeability” of the heteroatoms and heterogroups of the
Z group is the interchangeability within the group of O, S, or N-R . The ‘146 patent, however,2
explicitly states “at least one of said three members” for Z is O, S, or N-R , and thus, 2
explicitly leads one skilled in the art to also contemplate more than heteroatom or heterogroup.
Accordingly, the “interchangeability” noted by Shiokawa would, following the plain language of the
‘146 patent, lead one skilled in the art to replace the CH moieties appearing in the Z position of the
2
“core-heterocycle” groups with O, S, or N-R so long as the resulting compound contained at least one2
O, S, or N-R in the Z position. Yet, the ‘146 patent cannot be said to lead one skilled in the art to the2
Shiokawa Group I heterocycles if one skilled in the art is allow to freely change the Z group CH , O, S,
2
2 2
or N-R such that the final heterocycle contains at least one of O, S, or N-R in the Z position.
Shiokawa contends that since certain heterocycles of Group I appear in the examples and
Table 1 of the ‘146 patent, there exists a “clear preference” for the compounds of Group I. (SX 2001,
¶16-25). The ‘146 patent, however, makes no such statement. Moreover, the examples and Table 1
of the ‘146 patent are not directed to a 1,3,5-oxadiazine compound. Also, none of the examples and
only one of the forty compounds of Table 1 involves a 1,3,5-thiadiazine compound. As such, it is not
clear that the ‘146 patent evidences, as alleged by Shiokawa, a “clear preference” for compounds
possessing the 1,3,5-oxadiazine or 1,3,5-thiadiazine ring structure encompassed by Shiokawa’s Group
I.
v. Example 5 of the ‘146 Patent does not Reasonably Convey that
Shiokawa Invented Claimed 1,3,5-oxadiazines
41
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