Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 29
Dr. Seifert and acknowledged by Nichols, while the FAB mass spectrum is not
inconsistent with the chemical structure drawn by Dr. Nichols, the FAB mass spectrum
data alone is insufficient to independently corroborate that sample 9413-32-111 is in fact
(NN-diphenyl)-4-ureido-5,7-dichloro-2-carboxy-quinoline ethyl ester. No additional
data, e.g., NMR data, etc. have been offered for sample 9413-32-111. Further, the NIH
did not determine the chemical structure or any other physical property of sample 9413
32-111. Thus, none of Exs 2035, 2039, 2040 (Ex E) or F, alone or in combination,
independently corroborate Nichols' alleged synthesis of (NN-diphenyl)-4-ureido-5,7
dichloro-2-carboxy-quinoline ethyl ester. Additionally, Ex F is inconclusive as to
whether sample 9413-32-111 would work for its intended purpose.
Therefore, Nichols fails to meet its burden of proving that the July 13, 1994
experiment resulted in an actual reduction to practice of an embodiment within the
scope of the Count, i.e., that the theoretically expected product was obtained and would
work for its intended purpose.
In summary, Nichols fails to meet its burden of proving that any of its
experiments begun on (a) April 11, 1994, (b) May 3, 1994, (c) July 1, 1994 or (d) July
13, 1994 resulted in an actual reduction to practice of an embodiment within the scope
of the Count before Tabakofrs June 6, 1997 effective filing date.
B. Derivation
Notwithstanding the failure to prove an actual reduction to practice, Nichols may
still prevail if it can prove that Tabakoff derived the subject matter of the invention from
Nichols.
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