Ex Parte Davidson et al - Page 3

                 Appeal 2007-0860                                                                                      
                 Application 10/148,535                                                                                
                        Gross-Tsur is cited for disclosing “the usefulness of methylphenidate                          
                 for treating epilepsy patients.”  (Id.)                                                               
                        The Examiner concludes:                                                                        
                               A person of ordinary skill in the art would have been                                   
                        motivated to use the single isomer disclosed by Harris [ ] in                                  
                        Gross-Tsur's method because a single enantiomer would have                                     
                        been expected to be similarly useful as the racemic mixture.  As                               
                        stated above, the Examiner cited prior art teaches                                             
                        methylphenidate (Ritalin) as a racemic mixture, placing the                                    
                        skilled artisan in possession of both optical isomers (i.e., 1- and                            
                        d-threo-methylphenidate).  Absent some difference in kind                                      
                        between the various isomers the skilled artisan would have seen                                
                        each isomer as prima facie obvious (see In re Adamson and                                      
                        Duffin, 125 USPQ 233 (CCPA 1960)[)].  The skilled                                              
                        artisan would have expected optical isomers to be separable and                                
                        isomers so separated to exhibit physiological effects at varying                               
                        levels.  Possessing a compound known to contain chiral centers,                                
                        places all the resultant compounds in the skilled artisan's                                    
                        possession.  It would follow therefore that the instant claims                                 
                        recite prima facie obvious subject matter and are properly                                     
                        rejected under 35 USC 103.  As admitted on the record, threo-                                  
                        methylphenidate is taught by the Examiner cited prior art as                                   
                        optically active.  Thus, use of one or another optical isomer by                               
                        the skilled artisan would have seen as prima facie obvious,                                    
                        absent some difference in kind between the various isomers. see                                
                        In re Adamson and Duffin, 125 USPQ 233 (CCPA 1960).                                            
                 (Id.)                                                                                                 
                        “In rejecting claims under 35 U.S.C.  103, the examiner bears the                             
                 initial burden of presenting a prima facie case of obviousness.  Only if that                         
                 burden is met, does the burden of coming forward with evidence or                                     
                 argument shift to the applicant.”  In re Rijckaert, 9 F.3d 1531, 1532, 28                             
                 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citations omitted).  In order to                                  
                 determine whether a prima facie case of obviousness has been established,                             

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