Appeal No. 1998-1245
Application No. 08/111,831
103 as to the claimed subject matter. The examiner's rejections before us would appear to
be based on two propositions. The first is that, since DHA has been established to be
useful in the treatment of schizophrenia (Horrobin), one of ordinary skill in this art would
have expected the metabolites of DHA to have similar activity. The second is that, since
Kimura I and Kimura II describe the use of certain derivatives of DHA in the form of
compositions as useful for enhancing brain function, the compositions containing
metabolite derivatives of DHA would have been obvious as would the use of the specific
derivatives of DHA in the treatment of psychosis.
Considering first the question of whether one of ordinary skill in this art would expect
the metabolites of DHA to have the same utility as DHA itself, we note that the examiner
has cited Goodman and Gilman's as evidence that such activity would be expected.
However, our reading of the portion of Goodman and Gilman's (page 12), relied on by the
examiner, is less than definitive on this issue and in fact states that such metabolites "may
exert effects that are similar to or different from those of the parent molecule." (Emphasis
added.) Additionally, we agree with appellants' reasoning at pages 5-7 of the
Supplemental Brief filed May 23, 1996 (Paper No. 18) in support of the conclusion that "it
is impossible to predict the physiological activity of a metabolite from the known
physiological activity of the substrate from which it is derived." Thus, while there is a
possibility that the metabolites of DHA would have a pharmacological activity similar to
that of the parent, this general statement from Goodman and Gilman's does not reasonably
suggest a likelihood that these specific metabolites will be useful in this manner. More is
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