issued a restriction requirement. (SX 2005, Office Action mailed June 27, 1996, p. 5). The restriction
requirement identified five distinct groups of inventions. The restriction did not identify 1,3,5-
oxadiazines as one of the independent and distinct inventions, rather the 1,3,5-oxadiazines fell into the
fifth group which encompassed “any other species instance in claim 1 not grouped above.” (SX 2005,
p. 2). In response to the restriction requirement, Shiokawa decided to provisionally elect, with
traverse, the 1,3,5-oxadiazines compounds, a subgenus not specifically identified by the examiner
in the restriction requirement. (SX 2005, pages 2 and 5).
vii. Lack of Written Description Finding is Consistent with Statement Made
by Several of the ‘146 Inventors
Our analysis is consistent with that of several of the inventors named in the ‘146 patent.
Specifically, Japanese Application No. 6-35254 (laid open no. 7-224062) was filed on February 9,
1994 (‘254 application”). Koichi Moriya and Yumi Hattori are listed as inventors on both the ‘254
application and the ‘146 patent. (Compare SX 2003, front page and MX 1005, p. 1). The JP ‘254
application specifically describes both 1,3,5-oxadiazines and 1,3,5-thiadiazines, i.e., X is oxygen or
sulfur in Formula (I). (MX 1005, p. 4). Indeed, claim 2 of the ‘254 application is directed to 1,3,5-
oxadiazines that are fully encompassed by the subgenus of claim 1 of the ‘146 patent. Yet, the JP 15
‘254 application states:
PRIOR ART AND TECHNICAL ISSUES Laid-open Patent Application Hei 2-
235881 [i.e., JP application ‘943, the foreign priority document relied upon by the ‘146
patent], which was known prior to the submission of this application, describes nitro or
15Note that claim 2 of the JP ‘254 application defines A as including 6-chloro-3-pyridyl
whereas claim 1 of the ‘146 patent defines A as including 2-chloropyridin-5-yl. While named
differently, these are the same substituents.
45
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