same and separate patentable inventions. Indeed, Shiokawa erroneously states the facts and reasoning
set forth in Fujikawa. In Fujikawa, Fujikawa filed a motion to add a narrow subgenus count and it
was Wattanasin’s disclosure that did not sufficiently describe the subject matter of the proposed
count. The court made no mention of an estoppel theory in determining that Wattanasin’s disclosure
lacked adequate written description for the proposed subgenus count. It does not stand to reason that
the court meant to imply that Fujikawa’s motion estopped Wattanasin from asserting adequate written
descriptive support for the proposed subgenus.
2. Dr. Zielger’s Testimony Does Not Establish Presence of 1,3,5-oxadiazine in
Final Product of Example 5
Shiokawa contends that Dr. Ziegler, Maienfisch’s expert, conceded that a 1,3,5-oxadiazine
should be considered among the products formed in the reaction mixture of example 5. (Paper No. 81,
p. 10 and SX 2086). While it appears that Dr. Ziegler could not rule out the possibility that a 1,3,5-
oxadiazine could be formed using the nitroguanidine and paraformaldehyde of example 5, it is not clear
that Dr. Ziegler admits that a 1,3,5-oxadiazine would be present in the final product of example 5.
Specifically, Dr. Ziegler’s depiction of the products of example 5 (SX 2086) appears directed to
example 5 of the ‘146 patent with the methoxyamine hydrochloride (amine reactant) being specifically
omitted from the reaction mixture. Similarly, the question asked of Dr. Ziegler during his cross-
examination included the statement “the 1,3,5-oxadiazine was one of the possible products following
example 5 but omitting the amine reactant.” While the omission of the amine reactant may result in the
formation of the 1,3,5-oxadiazine the focus of example 5 is a reaction where methoxyamine
48
Page: Previous 43 44 45 46 47 48 49 50 51 52 53 54 55 56 57 Next
Last modified: November 3, 2007