Appeal No. 2003-1743 Page 4
Application No. 09/540,205
The Rejection
The previously entered rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as
anticipated by Gorman has been withdrawn (Examiner’s Answer, Paper No. 17,
section (11)).
Claims 1 through 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Gorman.
Discussion
On consideration of the record, we reverse the examiner’s rejection of claims 1
through 23 under 35 U.S.C. § 103(a).
Claims 1 through 21
Applicants argue that there is no apparent reason, suggestion, or motivation
stemming from the prior art which would have led a person having ordinary skill to
prepare a non-racemic mixture of l-methadone or a pharmaceutically acceptable salt
thereof and d-methadone or a pharmaceutically acceptable salt thereof. Accordingly,
applicants argue that the cited prior art reference would not have led a person having
ordinary skill “from here to there,” i.e., from the known racemic mixture of methadone
(dl-methadone) or the known individual isomers (the d- and l-isomers) to the non-
racemic mixture recited in claims 1 through 21. We agree.
On this point, the examiner argues that “[r]egarding altering the amount of
isomers, since it is known that the l-isomer of methadone has the greater analgesic
potency . . . and the d-isomer does not induce sedation and prevents tolerance, it would
have been obvious to alter the ratio of d-isomer/l-isomer [in the known racemic mixture]”
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007