Ex Parte Davidson et al - Page 7

                 Appeal 2007-0860                                                                                      
                 Application 10/148,535                                                                                
                 retrospective study of adults and children with traumatic brain injury and                            
                 active seizure disorders, found a trend toward a lesser incidence of seizures                         
                 during methylphenidate therapy.”  (Gros. Tsur, p. 673.)  Gros-Tsur goes on                            
                 to state, however, that in their study, “changes in seizure frequency were                            
                 noted when methylphenidate was given to the five children who were still                              
                 having seizures.  This observation may simply reflect a normal variation in                           
                 seizure frequency, but it does raise concerns regarding the presumably                                
                 innocuous nature of methylphenidate in children whose seizures are not well                           
                 controlled.”  (Id. at 673-74 (emphasis ours).)  Thus, Gros-Tsur, who are                              
                 artisans of skill in the art, do not find Wrobleski demonstrates a level of skill                     
                 that would motivate the ordinary artisan to treat seizure disorders with                              
                 methylphenidate.                                                                                      
                        Claims 3 and 7 stand rejected under 35 U.S.C. § 103(a) as being                                
                 obvious over the combination of Harris and Carlson.4                                                  
                        Harris is relied upon as above (Answer 6-7).  The Examiner                                     
                 acknowledges that Harris fails to teach the use of methylphenidate for                                
                 bipolar disorder (id. at 7).                                                                          
                        Carlson is cited for teaching a method of using methylphenidate for                            
                 treating bipolar disorder.                                                                            
                        The Examiner concludes:                                                                        
                               A person of ordinary skill in the art would have been                                   
                        motivated to use the single isomer disclosed by Harris [ ] for                                 
                        treating dipolar [sic] because a single enantiomer would have                                  
                                                                                                                      
                 4 We acknowledge the Dissent’s suggestion that a new ground of rejection be                           
                 made.  The rejection on appeal, however, is the one made by the Examiner,                             
                 not one that hypothetically could have been made.  If the Examiner                                    
                 concludes that the prior art supports a different rejection than the one                              
                 reversed herein, the Examiner is free to reject the claims on that basis.                             
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