(compound 17). As evident from Mr. Rindlisbacher’s Table 19, the 1,3,5-oxadiazine analog
compounds were more effective than the compounds from Table 1 of the ‘146 patent in 39 of the tests
and less effective in only one. Furthermore, each of the 1,3,5-oxadiazine analog compounds had at
least one insecticidal test in which the 1,3,5-oxadiazine proved more effective than the comparable
1,3,5-heterocycle of Table 1 of the ‘146 patent. We find Maienfisch’s evidence of unexpected20
results both credible and convincing.
Shiokawa contends that Maienfisch’s alleged unexpected results are not commensurate in
scope with Maienfisch’s claims. According to Shiokawa, it is unrebuted that the 1,3,5-oxadiazine
compounds S19 and S20, which fall within Maienfisch’s claim 24, are not unexpectedly superior over
their closest prior art. (Shiokawa Reply 4, Paper No. 95, p. 7). Shiokawa states that:
To overcome a showing of prima facie obviousness in instances where there are two or
more “closest” prior art compounds, a test compound must show unexpected results
over each of these “closest” prior art compounds. In re Johnson, 747 F.2d 1456,
1461, 223 USPQ 1260, 1264 (Fed. Cir. 1984). Since Maienfisch has clearly shown a
lack of unexpected superior activity over all of the closest prior art throughout the entire
claimed genus of compounds, it has not shown unexpected superior activity that is
commensurate in scope with the scope of the claimed invention.
(Paper No. 95, p. 7).
20As explained by Mr. Rindlisbacher:
Compounds that show no substantial activity in any of the tests are usually not tested
further and are not considered candidates for development into insecticides. On the
other hand, the fact that a compound shows little or no activity against a particular
insect pest or a category of pests in this set of standard tests does not mean that the
compound is not a viable candidate. Such a compound may still be a candidate if it
shows good activity against other pests or categories of pests in other of these tests.
(Declaration of Alfred Rindlisbacher, MX 1034, p. 2).
55
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