Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 33
71. Afterjoining Dr. Tabakoff, Dr. Snell contacted Dr. Nichols in December 1993 or
January 1994 and requested him to make a 4-urea kynurenic acid derivative because
Dr. Snell wanted to study the efficacy of this compound in treating alcohol withdrawal
(NR, pp. 10-11, TT 25-26; p. 26, 1 10).12
First, Nichols does not present any evidence that it knew of any 4-urea kynurenic
acid derivative, within or without the Count, let alone any specific chemical structure of
such a derivative, e.g., one having a disubstituted urea group, prior to being asked to
make 4-urea derivatives by Dr. Snell in December 1993 or January 1994. Second, an
unsubstituted 4-urea derivative (i.e., a compound according to Nichols claim I or 15
wherein R1, R2, R31 X" X21 X3 and X4 are all hydrogen), is a specific chemical structure
which is clearly within the scope of the Count, whereas a 4-amino kynurenic acid
derivative, as previously studied by Nichols, is not. Third, Nichols has not argued that a
particular type of derivative, e.g., a 4-urea kynurenic acid having a disubstituted urea
group, is required to meet all the limitations of the Count.
Thus, conception of a 4-urea kynurenic acid derivative would have been
complete in Tabakoffs mind if it was within ordinary skill in the art to synthesize a 4
urea kynurenic acid derivative.
12 Exhibit 2056 is a single-page fax cover page bearing the date of December 9, 1993 addressed
from Dr. Snell to Dr. Nichols. Exhibit 2057 is a single-page document showing three specific chemical
structures. Neither exhibit has been authenticated. Dr. Nichols expressly testified that he did not
remember receiving fax Ex 2056 or a request concerning the particular structures of Ex 2057. [NR, p. 71,
1. 14 - p. 72, 1. 22.1 Therefore, neither Ex 2056 nor 2057 has been accorded any weight or relied upon.
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