Appeal No. 1998-1245
Application No. 08/111,831
required. This limited evidence does not establish that the prior art would have suggested
to one of ordinary skill in the art that the metabolites of DHA would likely be useful in the
treatment of psychosis and that one attempting to use these metabolites in the manner
claimed would have a reasonable likelihood of success, viewed in light of the prior art.
See In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988).
As to the second proposition, we note that claims 8, 9, 11, and 13 are limited to
specific compounds which are not described in the prior art initially relied on by the
examiner. Similarly, claims 10 and 12 are directed to specific classes of metabolites
which are not described in the prior art relied on by the examiner. The ethyl ester of DHA
described by Kimura I does not correspond to any of the ethyl esters of claims 8, 9, 11, or
13. Further, there is no disclosure in any of these references which would establish that the
designated P450 dehydrogenase metabolites of DHA were known or pharmaceutically
active for any purpose. The general statements by the examiner relating to these
metabolites do not raise to the level of evidence necessary to establish that these
substances were known in this art at the time of the invention.
With regard to claim 14, the examiner has relied on Kimura II which discloses
derivatives of DHA, including phospholipids and triglycerides, as useful in obtaining
improvement in brain function. However, the examiner offers no evidence which would
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