Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 The Examiner’s assessment of the Wuest declaration testimony
2 The Examiner was not impressed with Dr. Wuest’s declaration testimony and
3 declined to give the testimony much, if any, weight.
4 Among other things, the Examiner found that the testimony was “speculative” and
5 had never been performed. Examiner’s answer, page 8; Tr-8:16-18. The Examiner
6 further found that the process suggested by Dr. Wuest was not described by Ochiai. The
7 Examiner still further found that the process suggested by Dr. Wuest relies on a
8 compound not shown to have been known earlier than the 1982 date of Morin.
9 Usami declaration
10 Appellants also rely on a declaration of Mr. Hirofumi Usami filed on or about
11 2 September 2005. Ex. 1035.
12 Mr. Usami is employed in the intellectual property department of the real party in
13 interest--Takeda. Usami declaration, Paragraph 3.
14 Through Mr. Usami’s testimony, we are told about what appears to have been a
15 somewhat long and involved prosecution of the numerous Ochiai applications.
16 According to Mr. Usami, part of the reason for the long prosecution is that Takeda
17 was unable to promptly obtain claims to cover competitors’ later developed compounds
18 within the scope of Ochiai’s generic claims “because of the refusal of the Examiner to
19 allow generic claims and the long appeal pendency at the Board *** that was the norm in
20 the 1980’s ***.” Usami declaration, Paragraph 20.
21 Mr. Usami undertakes an explanation of why “process of making” claims like
22 those in claim 1 of Ochiai ‘216 were not presented early in the Ochiai patent application
23 filing strategy. Usami declaration, Paragraph 25.
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