Appeal No. 1998-1245
Application No. 08/111,831
issues raised by this appeal to the quantum of evidence provided by the specific abstracts
relied on by the examiner.
The rejections under 35 U.S.C. § 103
Claims 8 - 9 stand rejected under 35 U.S.C. § 103 as being obvious over Kimura I.
The examiner urges that this abstract "teaches that ethyl esters of docosahexaenoic acid
(DHA) and DHA itself are known in compositions." (Answer, page 3). The examiner
acknowledges that the claims are directed to "particular ethyl esters of DHA which are
metabolites of DHA" (Id.) but urges that "one of ordinary skill would have been motivated to
employ any particular ethyl ester in a composition since these compounds are known
broadly in compositions, as is the parent compound, DHA, which results in formation of the
instant metabolites on administration to a host." The examiner addresses claim 9 by
stating that "[t]he pentanoic acid metabolites are also obvious from the prior art since they
differ from the hexanoic acid patent, DHA, by only one double bond in the carbon chain."
(Answer, sentence bridging pages 3-4).
In rejecting claims 10 - 13 under 35 U.S.C. § 103 as unpatentable over Horrobin
and Kimura II the examiner states that Horrobin "teaches that DHA is known in
compositions and methods for the treatment of psychosis" and differs from the claims "in
that they are drawn to methods employing particular metabolites of DHA." (Answer, page
4). The examiner urges that Kimura II "teaches that DHA metabolites encompassed by the
claims are known to have pharmacological activity." (Id.). The examiner concludes that
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