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Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 32
inventor has disclosed to others and what that disclosure means to one of ordinary skill
in the art." In re Jolle -, 308 F.3d 1317, 1321, 64 USPQ2d 1901, 1904 (Fed. Cir. 2002),
quoting Spero v. Ringold, 377 F.2d 652, 660, 153 USPQ 726, 732 (CCPA 1967). The
evidence must show that the inventor disclosed to others his "completed thought
expressed in such clear terms as to enable those skilled in the art" to make the
invention. Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985);
Field v. Knowles, 183 F.2d 593, 600, 86 USPQ 373, 379 (CCPA 1950).
a. the chemical structure of a 4-urea kynurenic acid
derivative originated with Tabakoff
68. Initially, we note, by way of background, that Dr. Nichols testified that
[m]y research with NMDA receptors and antagonists led to my work with
kynurenic acid derivatives. Kynurenic acid derivatives have been shown
to be a competitive inhibitor [sic] of glycine binding at the NMDA receptor.
Unless specifically stated otherwise, any references in this declaration to
my work in designing and synthesizing novel kynurenic acid derivatives
involved the inventive contributions of K. Lemone Yielding ("Yielding").
Continuing research with kynurenic acid derivatives led to the syntheses
of novel 4-amino substituted derivatives for use as NMDA antagonists,
such as 4-methylamino-5,7-dichloro-2-quinoline carboxylate, which
became the subject of U.S. Patent No. 5,493,027, issued in 1996 [based
on application 6,918, filed January 22, 1993] (previously filed as Exhibit
2015).
[NR, pp. 25-26, IT 6, 8.]
69. Dr. Nichols testified that he met Larry Snell (one of the Tabakoff inventors), then
a Ph.D. graduate student studying the pharmacology of NMDA receptors, while working
at the University of Texas Medical Branch (NR, p. 6, $ 10; p. 26, 19).
70. Dr. Snell joined Dr. Boris Tabakoff at the University of Colorado following his
Ph.D. and postdoctoral studies (NR, p. 10, 7 24; p. 26, T 10).
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