Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 50
strychinine-insensitive glycine binding.
2. Nichols fails to show that it "significantly". contributed to the
invention of Tabakoff claims 11-15,18 and 19
First, Nichols does not present any evidence that it knew of any 4-urea kynurenic
acid derivative prior to being asked to make 4-urea kynurenic acid derivatives by Dr.
Snell, let alone the series of 5,7-dichloro-4-ureido-2-carboxyquinolines that Tabakoff
expressed an interest in. Second, Nichols does not present evidence that it knew or
appreciated that Tabakoffs claimed compounds required a structure that inhibited both
voltage sensitive sodium channels and NIVIDA receptor function, specifically strychinine
insensitive glycine binding. Third, as discussed above (§ 111. Priority), Nichols fails to
establish that it would have required undue experimentation to synthesize Tabakoff's
claimed compounds. Fourth, there is insufficient evidence to corroborate Nichols claim
of joint inventorship, i.e., of a "significant" contribution, to the invention of Tabakoff
claims 11 -15, 18 and 19, with all of their claimed limitations.
In our opinion, Dr. Nichols performed routine synthetic activities on behalf of
Tabakoff and sent samples of his work to IN I H and/or Dr. Snell for testing, synthetic
activities which Tabakoff has readily admitted. We take no position as to whether or not
Nichols synthetic method is novel and unobvious. The process of making the involved
compounds is not at issue in the sole count of the interference. As indicated in our
earlier MEMORANDUM OPINION and ORDER (Paper 56, pp. 28-32), Nichols has not
shown that Tabakoff method of making claims 16 and 17 are substantially identical to
Nichols reissue application method of making claims 29-42.
Page: Previous 43 44 45 46 47 48 49 50 51 52 53 54 55 56 57 Next
Last modified: November 3, 2007