Shiokawa fails to sufficiently explain why Maienfisch’s testing of eight of the compounds
specifically depicted in Table 1 of the ‘146 patent did not involve the “closest prior art.” Specifically,
the ‘146 patent does not appear to indicate that a particular specific subgenus or species would possess
better or worse insecticidal properties than any other compound falling within the described genus of
insecticidal heterocyclic compounds. Further, the ‘146 patent does not appear to indicate which of the
forty compounds specifically depicted in Table 1 of the ‘146 patent will possess better or worse
insecticidal properties than any other depicted compounds. Also, it does not appear that any of the
compounds specifically compared to Maienfisch’s S19 and S20 1,3,5-oxadiazines are explicitly
mentioned in the ‘146 patent. (See MX 1034, Table 13 and Table 14 and note that E is N-CH CH in
2 2
Table 13 and N-CH CH CH in Table 14). Moreover, Shiokawa has failed to sufficiently explain why
2 2 2
one skilled in the art would be guided or directed to the analogs of S19 and S20 as representing the
“closest prior art.” In contrast, the eight compounds identified by Mr. Rindlisbacher in Table 19 of his
declaration are specifically depicted in Table 1 of the ‘146 patent. (SX 2003, Table 1, Compounds
numbered 11, 12, 14, 15, 16, 17, 19 and 23). It appears reasonable for one skilled in the art to select
the eight compounds identified in Table 19 of Mr. Rindlisbacher’s declaration as representative of the
closest prior art for Maienfisch’s claimed 1,3,5-oxadiazines.21
We find Maienfisch’s evidence of unexpected results both credible and convincing. Maienfisch
has sufficiently demonstrated that for the closest prior art the claimed 1,3,5-oxadiazine analogs
generally provided, as a class, results that a person of ordinary skill in the art would have found
21As noted above, the examiner of Maienfisch’s parent ‘931 application directed Maienfisch
toward compound 23 of Shiokawa as representing the closest prior art.
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