Ex Parte GOEDE et al - Page 8

          Appeal 1997-3391                                                            
          Application 08/212,578                                                      

          Eichel and Tamás.  Again, we disagree.  Lobisch suggests the                
          administration of flupirtine over several doses during a single             
          day.  Thus, Lobisch is able to recommend 3 doses per day of a               
          capsule or tablet having 50 mg to 200 mg of active ingredient,              
          i.e., flupirtine (col. 3, lines 28-30).  A person having ordinary           
          skill in the art would immediately recognize the benefit of the             
          use of a sustained-release system to spread administration of               
          flupirtine over time while securing the advantages recognized by            
          Eichel and Tamás.                                                           
               Applicants maintain that the prior art does not suggest that           
          side-effects, and in particular sedative side-effects, would be             
          minimized with a sustained-release system.  The CCPA has provided           
          a complete answer to applicants' argument.  In re Klosak, 455               
          F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972) (an inventor must              
          show that the results the inventor says are obtained with the               
          invention are actually obtained with his invention).  The fatal             
          flaw in applicants' argument is that there is no evidence in the            
          record that administration of flupirtine with a sustained-release           
          system avoids sedative side effects.  In fact, Lobisch suggests             
          that certain side effects were not found in certain experiments             
          involving flupirtine (Lobisch, col. 2, lines 3-6).  We do not               
          know the basis for applicants' assertion in the specification               
          that sedative side-effects are reduced.  To the extent that the             
          assertions in the specification are those of an "expert," we                

                                        - 8 -                                         

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007