Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 48
102. Dr. Nichols sent samples of several of his products to NIH for "anticonvulsant"
testing and/or to Dr. Snell for "pharmacological" testing as discussed above (see e.g.,
Ex 2024, second page, and § 111. Priority of this decision).
B. Analysis
It is Nichols burden to prove that it is a joint inventor of Tabakoff claims 11-15, 18
and 19 by a preponderance of the evidence. In re Cavenev, 761 F.2d 671, 226 USPQ
1, 3 (Fed. Cir. 1985); 37 CFR § 1.637(a). In our opinion, Nichols fails to show that it
'.significantly" contributed to the invention of Tabakoff claims 11 -15, 18 and 19 by a
preponderance of the evidence.
1 . claim interpretation
Initially, we note that "[i]f the body of the claim sets out the complete invention,
and the preamble is not necessary to give 'life, meaning and vitality' to the claim, 'then
the preamble is of no significance to claim construction because it cannot be said to
(a) ... If, however, you [Dr. Yielding] and Al to proceed with a patent application prior to our
getting data on the comparison of our compounds and those patented by Merck, I would
like you both not to forget our conversation in Denver. The idea for generating the
chemical structures (i.e., the ureido substituted kynurenates) originated with me, as did
the postulate of the proposed biologic activity of, particularly, the diphenylureido
derivatives. My postulates have been borne out by experiments in my laboratories. 1,
therefore, fully expect that any patent application on the ureido substituted kynurenates
will have me definitely included as an inventor on the application. [Ex 2005, emphasis
added.]
(b) ... I [Dr. Tabakoffl reiterate that the original idea to generate the
dichloro.diphenylureidokynurenates belonged to me, and, as well, I proposed the
physiological mechanisms by which such agents would express their anticonvulsant and
other actions. ... [Ex 2006, emphasis added.]
(C) In terms of inventorship and other business-related issues, I would want the
following: Given that the idea for the DCUKs fi.e., dichloro-diphenVl-ureido-kynurenatesI
originated with me [Dr. Tabakoffl, ... (Ex 2007, p. 2, emphasis added).
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