Appeal 2007-0860
Application 10/148,535
LINCK, Administrative Patent Judge, dissenting.
I respectfully dissent. I would affirm the Examiner’s rejection of
claims 2 and 7 based on the teachings of Harris and Goss-Tsur, including
Gross-Tsur’s description of Wroblewski’s study (Gross-Tsur, at 673 (citing
Wroblewski, 53 J. Clin. Psychiatry 86-89 (1992)). Given the level of skill in
the relevant art, these teachings would have suggested using Ritalin®
(racemic methylphenidate or MPH) to treat seizures with a reasonable
likelihood of success. Thus, treatment of seizures using of the l-enantiomer
would also have been suggested, absent unexpected results.
With respect to claim 3, treating bipolar disorder, I would reverse the
Examiner’s rejection and enter a new ground of rejection based on Harris
and El-Mallakh, 2 Bipolar Disorders 56-59 (2000), in view of what one of
ordinary skill in the art would have known regarding the use of
antidepressants in treating bipolar disorder. Again, based on these teachings,
the skilled artisan would have been motivated to treat bipolar disorder with
MPH with a reasonable likelihood of success. Thus, treatment of bipolar
disorder using of the l-enantiomer would also have been suggested, absent
unexpected results.
We determine obviousness based on the Graham factors: the scope
and content of the prior art; the differences between the prior art and the
claims at issue; and the level of ordinary skill in the relevant art. KSR Int’l
v. Teleflex Inc., 127 S. Ct. 1727, 1729-30. At the time of Appellants’
invention, racemic MPH had been used to treat both epilepsy and bipolar
disorder, and racemic methylphenidate had been successfully resolved into
the d and l enantiomers (infra Findings of Fact (“FFs”) 2, 6, 19). Further,
the prior art taught that both enantiomers are useful as pharmaceutical
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