Appeal No. 1995-1990
Application 08/006,691
Claims 7, 16, and 18 are directed to methods of preventing hyperkinetic movement
disorders wherein a therapeutically effective dose of an opiate receptor antagonist is
administered prior to the appearance of symptoms. In rejecting these claims, the
examiner relies on Lindenmayer and Sandyk. The examiner acknowledges that neither
reference discloses the administration of the opiate receptor antagonist before the
movement disorder is manifested, but urges that having disclosed the treatment of such
disorders, administration before the appearance of symptoms would have been obvious.
(Answer of Sept. 1, 1992, pages 4 and 5). The examiner provides no factual evidence in
support of the proposition that once it has been established that a given agent is useful in
the treatment of an established condition that this alone would have suggested to those of
ordinary skill in the art that the agent would be useful for the prevention of the same
condition. Appellant, in rebuttal, offers the declarations of Dr. Sax and Dr. Kornetsky
(Paper No. 25) in support of the position that a known treatment does not necessarily give
rise to a reasonable expectation of success in the prevention of a given condition. Thus,
having weighed the evidence before us, we conclude that the examiner has failed to
establish a prima facie case of unpatentability as to claims 7, 16, and 18.
Claims 14, 17, 19:
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