suppressed. Paragraphs 48 and 49 of Dr. Ziegler’s declaration, relate to the contents of Japanese
Application No. 6-35254 filed on February 9, 1994. (Laid open no. 7-224062, MX 1006 and its
translation MX 1005). According to Shiokawa, these exhibits are cited by Maienfisch as evidence of
Shiokawa’s lack of written description. Shiokawa, however, argues that MX 1005
and 1006 and the paragraphs 48 and 49 of MX 1001 are irrelevant because the issue of adequate
written description is as of the filing date of the application relied upon and since the February 9, 1994
filing date is significantly after the alleged 1989 priority date of the involved Shiokawa ‘146 patent.
Additionally, Shiokawa argues that these exhibits are irrelevant because the 1994 application merely
states that the 1,3,5-oxadiazines are not “specifically” disclosed in the ‘146 patent.
As set forth in 37 CFR § 1.671(b), except as otherwise provided in the rule, the Federal Rules
of Evidence shall apply to interference proceedings. As defined in the Federal Rules of Civil
Procedure:
“Relevant evidence” means evidence having any tendency to make the existence of any
fact that is of consequence to the determination of the action more probable or less
probable than it would be without the evidence.
Fed. R. Evid. P. 401. Thus, the question of relevance is a question of whether the evidence tends to
prove a disputed fact.
The JP ‘254 application is cited by Maienfisch as evidence that the ‘146 patent disclosure did
not include a written description of the claimed 1,3,5-oxadiazines. (Maienfisch Opposition 14, Paper
No. 112, p. 1). Maienfisch Exhibits 1005 and 1006 contain the statement that “The compounds of the
present invention’s application [1,3,5-oxadiazines and 1,3,5-triazines] can be conceptually included in
the [JP ‘943] disclosure, but are not specifically disclosed therein.” (MX 1005, p.3). As written
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