Interference No. 104,522 Paper'08
Nichols v. Tabalkoff Page 45
93, Nichols' position is perhaps best summarized in its reply, i.e., "[flhe only
significant fact is that conception and/or reduction to practice of the compound was not
complete until Nichols conceived of the synthesis method, and therefore Nichols should
have been included as a co-inventor on Tabakoff's application" (Paper 50, p. 6). (See
also Paper 33, p. 8.")
94. In its opposition, Tabakoff primarily argues (a) Nichols preliminary motion 1
improperly raises issues of priority and derivation (Paper 45, p. 6) and, (b) even if
Nichols independently devised a synthesis method, Tabakoff instructed Nichols as to
what compounds to make and Nichols's method of making the involved compounds
only amounted to the exercise of ordinary skill in the art (Ld., pp. 11-12).
A. The invention of Tabakoff claims 11-15,18 and 19
As stated above, Tabakoff claim 12 is directed to a compound for treating
withdrawal syndromes manifested in a patient suffering withdrawal symptoms and/or
withdrawal-induced brain damage and having the formula (1):
17 In its motion, Nichols contends that
...First, conception of the invention was not even complete until Nichols conceived of the
novel synthesis method, independent of any input from the Senior Party. ... Second,
reduction to practice of the synthesis method and the organic compounds was conducted
entirely by the Junior Party, with no contribution from the Senior Party. Third, Nichols'
contributions to conception and reduction to practice were obviously significant, as
Nichols' was responsible for all of the work with no assistance from the Senior Party.
Finally, Nichols'work included the development of a novel synthesis method that was not
found in any prior art, and therefore the Junior Party's work cannot be classified as merely
using well-known concepts or current state of the art. [Paper 33, p. 8, citation omitted.]
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