Appeal No. 1995-1990
Application 08/006,691
provides no factual evidence which would suggest that the described results could have
reasonably been extended to the treatment of hyperkinetic movement disorders arising
from non-drug induced conditions such as those claimed. Absent such evidence, it can not
reasonably be concluded that one of ordinary skill in this art would have found it obvious to
treat the conditions of the present claims with an opiate receptor antagonist. To the extent
that it can be urged that the successes of Lindenmayer and Sandyk would have
encouraged those of ordinary skill in the art to try such opiate receptor antagonists in the
treatment of other such conditions involving hyperkinetic movement disorders, we note
simply that "obvious to try" is not the appropriate legal standard for establishing a prima
facie case of obviousness within the meaning of 35 U.S.C. § 103. In re O'Farrell, 853 F.2d
894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d
469, 473, 5 USPQ2d 1529, 1532 (Fed. Cir. 1985); Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1380, 231 USPQ 81, 90-91 (Fed. Cir. 1986). Thus, as to
claims 14, 17, and 19, the examiner has failed to establish a prima facie case of
unpatentability of the claimed subject matter based on the disclosures of Lindenmayer and
Sandyk.
Claims 12, 13, 21, and 22:
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