Interference No. 104,522 PaperIO8
Nichols v. Tabakoff Page 34
b. Nichols fails to establish that "extensive" or "undue"
experimentation was required to synthesize a 4-urea
kynurenic acid derivative
Nichols argues that conception requires knowledge of both the specific chemical
structure of the compound and an operative method of making it (NR, p. 29, 13) and
that it required "extensive" research to determine whether a 4-urea kynurenate
derivative could actually be synthesized (id., p. 30, T 2). According to Nichols, it
"attempted several experiments over several months using 2 synthetic schemes that
were unsuccessful before it conceived of a new synthetic scheme which subsequently
proved successful" (NB, p. 30).
"The test [for extensive or undue experimentation] is not merely quantitative,
since a considerable amount of experimentation is permissible, if it is merely routine ......
PPG Indus., Inc. v. Guardian Indus, Corp., 75 F.3d 1558, 1564, 37 USPQ2d 1618,
1623 (Fed. Cir. 1996) (quotation and citation omitted); see also In re Wands, 858 F.2d
731, 736-40, 8 USPQ2d 1400, 1403-07 (Fed. Cir. 1988). The determination of what
constitutes undue experimentation in a given case must be decided on the facts of each
particular case and requires the application of a standard of reasonableness, having
due regard for the nature of the invention and the state of the art.
In its reply brief, Nichols asks "[w]here is Party Tabakoffs evidence that Party
Nichols' synthetic skills were only 'ordinary'?" (NRB, p. 17). That is precisely the wrong
question. It is Nichols' burden to show by a preponderance of the evidence that
synthesis of 4-urea kynurenates required undue experimentation.
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