a reference is modifiable nor implying one of ordinary skill
in the art would modify a reference to reach the claimed
invention establishes a prima facie case. MPEP § 2143.01.
The prima facie case requires a desirable reason to modify a
reference to reach the claimed invention. Id.
Yet in this rejection conspicuously absent from the
record is any reason to modify the teachings of ***
[Hamilton] to include, e.g., "an effective amount of a
heterocyclic compound" of the claimed invention. Therefore
the rejection is improper and should be reversed.
23. The examiner provided a complete answer to
applicants' argument by referring in the Examiner's Answer
(Paper 12, page 3, line 1) to col. 14, lines 6-16 of Hamilton.
There Hamilton states:
The present invention also relates to a pharmaceutical
composition comprising:
(i) a neurotrophically effective amount of the
compound of formula I, II, III or IV, and
(ii) a pharmaceutically acceptable carrier.
24. The examiner also called attention to
columns 2-14. Col. 12, line 4 also describes the use of a
neurotrophically effective amount of a compound of formula I, II,
III or IV. A neurotrophically effective amount is a "an
effective amount" of a compound. 10
10 We believe applicants' sole argument for reversal with respect to
Hamilton also borders on frivolous. In this respect, we again note no reply
brief was filed to respond to the Examiner's Answer.
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