cyano compounds. The compounds of the present invention’s application can
be conceptually included in the [JP ‘943] disclosure, but are not specifically
disclosed therein.
(MX 1005, p. 3, emphasis added). Thus, our analysis as to the ‘146 patent’s lack of written
descriptive support for the claimed 1,3,5-oxadiazines is not inconsistent with the comments made by
several of the inventors of the ‘146 patent.
C. Maienfisch Preliminary Motion 1 Alleging Lack of Written Description for Claims of
‘146 Patent
Maienfisch Preliminary Motion 1 moves for judgement against claims 1-3 of the ‘146 patent on
the grounds that the application for the ‘146 patent did not contain a written description of the claimed
invention. Maienfisch’s motion raises many issues similar to those addressed above with respect to
Shiokawa’s Corrected Preliminary Motion 1, 16, 17especially since Shiokawa’s arguments regarding
their alleged constructive reduction to practice of the subject matter of the count were directed to the
question of written description for claim 1 of the ‘146 patent. Rather than repeat many of the
arguments raised by the parties with respect to Maienfisch Preliminary Motion 1, we focus on those
16As the moving party of Maienfisch Preliminary Motion 1, Maienfisch bears the burden of
proof on the issue of Shiokawa’s lack of written description for claims 1-3 of the ‘146 patent.
17Regarding the lack of written description for claims 1-3 of the ‘146 patent, we review the
written description contained in Shiokawa’s ‘780 application as of its February 7, 1996 filing date as
opposed to Shiokawa’s earlier filed applications.
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