claimed compounds fall within the scope of the preferred heterocyclic compounds of JP ‘943.
Similarly, Maienfisch’s claimed compositions and methods, with the exception of the tautomers, fall
within the scope of compositions and methods described by JP ‘943. JP ‘943, however, does not
literally describe a 1,3,5-oxadiazine heterocyclic compound nor would such a compound be
immediately envisioned from the JP ‘943 disclosure. Yet, the JP ‘943 disclosure does suggest that
certain classes of heterocyclic compounds, such as Maienfisch’s claimed oxadiazines, would be
effective as insecticides.
Thus, given the JP ‘943 disclosure, it may have been prima facie obvious to one of ordinary skill in the
art to form Maienfisch’s claimed 1,3,5 oxadiazines with the expectation that such compounds would
function as effective insecticides.
Additionally, we note that Maienfisch’s parent ‘931 application specifically claimed a pest-
resistant plant propagation material having 1,3,5-oxadiazines. The claimed 1,3,5-oxadiazine containing
material was rejected as obvious over Shiokawa’s parent ‘589 patent. (SX 2063, pages 3-4). In
making the obviousness rejection the examiner stated that:
It is noted that the closest compound disclosed in Shiokawa is compound no.
23 at Col. 13. The claimed compounds differ from this compound only by the
replacement of the sulfur ring atom with an oxygen atom. These two atoms are taught
to be equivalent at this position at Col. 1, line 30 in the formula I compounds. Thus,
one skilled in the art would have been motivated to replace the sulfur atom with an
equivalent oxygen atom with the expectation that such similar compounds would
possess similar insecticidal activity.
If applicants intend to present evidence of unexpected insecticidal results, such
testing should be comparative with closest compound in Shiokawa, i.e. compound 23
therein.
(SX 2063, p. 4).
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