Appeal No. 1998-1245
Application No. 08/111,831
suggest that improved brain function as described by Kimura II relates to the treatment of
psychosis as claimed in claim 14.
The examiner has cited the two VanRollins abstracts, apparently, to establish that
the metabolites of DHA utilized in claims 8 - 13 are known in the prior art. (Supp. Answer,
pages 3 and 4). However, these abstracts provide no information as to the possible use of
these derivatives to obtain a pharmacological effect or to suggest that any of the
derivatives would be useful in treating psychosis as presently claimed. As we have stated
above, merely because these compounds are metabolites of DHA does not, standing
alone, suggest their use in the manner presently claimed. In fact, the only information to be
found in this record which would suggest the use of the metabolites and or derivatives of
DHA for the treatment of psychosis appears to be appellants' disclosure of the present
invention. However, use of this information as a basis for establishing a prima facie case
of obviousness, within the meaning of 35 U.S.C. § 103, would constitute impermissible
hindsight.
Thus, we conclude, that on this record, the examiner has failed to provide facts or
substantive evidence which would reasonably support a conclusion that the claimed
subject matter would have been obvious within the meaning of 35 U.S.C. § 103. Where,
as here, 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 1596, 1598 (Fed.
Cir.1988). Therefore, we reverse the rejections of claims 8 - 14 under 35 U.S.C. § 103.
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