dated October 6, 2000 (MX 1034), as demonstrating the unexpectedly superior properties of
Maienfisch’s claimed 1,3,5-oxadiazines.
Dr. Hubert Buholzer’s declaration testimony (SX 2008) provides a discussion of a test where
compound 23 of the ‘146 patent (a 1,3,5-thiadiazine) was compared against a 1,3,5-oxadiazine
compound whose molecular structure differed from compound 23 only in that an oxygen atom replaced
the sulfur atom. The 1,3,5-oxadiazine compound is encompassed by Maienfisch claim 24. The two
compounds were tested at several different concentrations against
a variety of pests. In each instance, the 1,3,5-oxadiazine compound provided equivalent or superior
insecticidal action. (SX 2008, tables 1 and 2). According to Dr. Buholzer, the superior insecticidal
action of the 1,3,5-oxadiazine compound was highly surprising and could not have been expected from
the teachings of the prior art. (SX 2008, p. 5).
The declaration testimony of Mr. Alfred Rindlisbacher reviews the test data, Annex 23 and
Annex 24, that was submitted by Novartis in connection with a European patent opposition proceeding
relating to EP 386,565. (MX 1034, p. 1). According to Mr. Rindlisbacher, the Annex 23 data is from
a battery of tests performed by Mr. Rindlisbacher for a variety of compounds. (MX 1034, p. 2). Mr.
Rindlisbacher testifies that of the forty compounds depicted in Table 1 of the ‘146 patent, eight were
tested along with their closest 1,3,5-oxadiazine analogs for insecticidal effectiveness. (MX 1034, pages
23-24). A comparison of the insecticidal test results for the eight compounds from the ‘146 patent and
their closest 1,3,5-oxadiazines is provided in Table 19 of Mr. Rindlisbacher declaration. (MX 1034, p.
24). The eight compounds from the ‘146 patent included one “nitro”-1,3,5-thiadiazine (compound 23),
six “nitro”-1,3,5-triazines (compounds 11,12, 14, 15,16 and 19) and one “cyano”-1,3,5-triazine
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