Example 5 makes no mention as to the coproduction of a 1,3,5-oxadiazine intermediate
compound. Example 5 is entitled “Preparation of an intermediate compound” and depicts the structure
of a 1,3,5-triazine compound (5-methoxy-2-nitroimino-hexahydro-1,3,5-triazine) that conforms to the
intermediate heterocycles of formula (III). (SX 2003, col. 17, lines 25-35). Example 5 provides a
mixture of nitroguanidine, methoxyamine hydrochloride, paraformaldehyde, toluene and a catalytic
amount of hydrochloric acid. (SX 2003, col. 17, lines 37-40). There is no dispute that this mixture is
capable of reacting to form the 5-methoxy-2-nitroimino-hexahydro-1,3,5-triazine said to have been
obtained in example 5.
Attempting to prove inherency, Shiokawa relies upon an experiment said to have been
conducted by Dr. Peter Jeschke where Dr. Jeschke attempted to carry out the reaction described in
example 5 of the ‘146 patent. (SX 2056, p. 2). It is not clear that Dr. Jeschke successfully replicated
example 5. For example, after removing the solvent, Dr. Jeschke obtained a “light yellow solid”
whereas example 5 of the ‘146 patent was said to have obtained “white crystals.” (SX 2003, col. 17,
lines 43-47). Shiokawa, however, has not sufficiently explained why Dr. Jeschke obtained a yellow
product as opposed to the specifically stated white product of example 5. As the resulting products of
Dr. Jeschke’s process and that of example 5 differed in color, Shiokawa has failed to demonstrate that
the final product of example 5 would necessarily contain a 1,3,5-oxadiazine.
Additionally, there is no indication that the Shiokawa inventors were aware that a 1,3,5-
oxadiazine intermediate compound was potentially formed by the process of example 5. At best,
Shiokawa has demonstrated that it may be theoretically possible for a detectable quantity of a 1,3,5-
oxadiazine intermediate compound to form in the reaction of example 5. Yet, the mere
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