Interference No. 103,675
compounds allegedly discovered by Chen et al. after they filed their
applications.
We also find unpersuasive Chen et al.'s argument that based
on the NMR data in the examples from their first filed application, a
person of ordinary skill in the art at the time the first application
was filed would have recognized from the NMR data alone that the
compounds prepared included the cyclopropyl derivatives of the counts.
There is absolutely no evidence in the record which supports such a
position. Indeed, we consider the testimony of various witnesses,
including Kadow (CR 40,41), Kingston (CR 1823, lines 15 through 24; CR
1825, lines 1 through 10)) Huang (CR 664-65), and Kant (CR 2169) that:
without prior knowledge of what compound was expected to be produced
by a particular reaction; without an existing NMR spectra for a sample
known to be that of the compound sought to be produced to compare with
the NMR of the compound actually produced; and without other physical
data characteristic of the target compounds, the NMR data alone would
have been insufficient for purposes of identifying the products of
Examples 2, 3, 5 and 6 as cyclopropyl derivatives.
We have carefully considered the various cases cited and
relied on by Chen et al. and alleged to establish that under certain
fact scenarios an earlier filed disclosure may, inherently, describe
subject matter later claimed by an applicant for patent. Questions of
35
Page: Previous 28 29 30 31 32 33 34 35 36 37 38 39 40 41 42 Next
Last modified: November 3, 2007