Appeal No. 1995-1990
Application 08/006,691
Claims 12, 13, 21, and 22 are alternatively dependent on claims drawn to
"preventing" or "treating" a genetic, idiopathic or psychogenic hyperkinetic movement
disorder. We have considered the rejection of claims 12, 13, 21, and 22 over
Lindenmayer and Sandyk and conclude that the examiner has similarly failed to establish a
prima facie case of unpatentability as to the subject matter of these claims whether
directed to prevention or treatment for the same reasons discussed above with regard to
the independent claims on which they depend.
Conclusion
The initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
On this record, we find that the examiner has failed to provided the factual evidence which
would reasonably establish that the presently claimed methods would have been obvious
within the meaning of 35 U.S.C. § 103. In our opinion, Lindenmayer and Sandyk, as
discussed by the examiner, would not have made obvious the use of the opiate receptor
antagonists required by the claims for the treatment or prevention of neuroleptic induced
tardive dyskinesia or hyperkinetic movement disorders arising from genetic, idiopathic or
psychogenic conditions. Where the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
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