Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 42
that phosgene and triphosgene are equivalent for this type of acylation reaction. The
evidence still further suggests that the particular 4-urea derivative synthesized was
-determined, at least in part, by what chemicals Dr. Nichols already had in his laboratory.
The evidence does not suggest extensive experimentation or research over an
extensive time period prior to conception of Dr. Nichols' "operable" synthetic scheme.
Thus, we do not find credible the testimony of Dr. Nichols that "extensive
experimentation" beyond ordinary skill in the art was required to synthesize 4-urea
kynurenic acid derivatives in view of the above and the testimony of Dr. Ruth.
Therefore, since the chemical structure of the subject matter of the Count
originated with Tabakoff and since Nichols fails to show by a preponderance of the
,evidence that synthesis of 4-urea kynurenates required undue experimentation, Nichols
fails to establish conception of the subject matter of the Count.
2. communication
To prove derivation, Nichols must establish prior conception of the claimed
subject matter and communication of the conception to Tabakoff. Hedgewick, 497 F.2d
at 908, 182 USPQ at 169; Mead v. McKiman, 585 F.2d 504, 507, 199 USPQ 513, 515
(CCPA 1978). Since Nichols has not met its burden of proving the first prong of
derivation, i.e., prior conception of the claimed subject matter, we do not reach the
second prong of derivation, i.e., whether Nichols subsequently communicated its
alleged conception to Tabakoff sufficiently to enable one of ordinary skill in the art to
make and use the subject matter of the Count.
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