Appeal No. 1998-1245
Application No. 08/111,831
"one or ordinary skill would have been motivated to employ any metabolite of DHA in a
psychosis treatment with the expectation of similar activity, since the parent compound,
DHA was known for the same purpose and its metabolites are expected to form in a host
after its administration." (Id.). As in the previous rejection the examiner urges that "[t]he
pentanoic acid metabolites are also obvious from the prior art since they differ from the
hexanoic acid parent, DHA, by only one double bond in the carbon chain." (Id.).
In rejecting claim 14 under 35 U.S.C. § 103, the examiner, again, relies on Horrobin
as teaching that "DHA is known in compositions and methods for the treatment of
psychosis." (Answer, page 5). The examiner acknowledges that the "claim differs in that it
is drawn to methods employing a phospholipid or triglyceride of DHA." (Id.). Kimura II is
urged to teach that "DHA and its derivatives, including phospholipids and triglycerides, are
known as a group, to have similar pharmacological activity." (Id.). Thus, "one or ordinary
skill would have been motivated to employ a composition consisting essentially of a
phospholipid or triglyceride of DHA in a method of treating psychosis since DHA was
known for the same purpose and these derivatives would be expected to exhibit similar
activity." (Id.).
As with any rejection under 35 U.S.C. § 103, the initial burden of presenting a prima
facie case of obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). On the record before us, we find
that the examiner has failed to point to those facts or provide evidence which would
reasonably support a prima facie case of obviousness within the meaning of 35 U.S.C. §
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