Appeal No. 2003-1743 Page 5
Application No. 09/540,205
(Examiner’s Answer, Paper No. 17, paragraph bridging pages 6 and 7). That, however,
amounts to a non sequitur. On this record, the only motivation we can find for preparing
the non-racemic mixture recited in claims 1 through 21 stems from applicants’
specification, not the Gorman reference. Again, we refer to the instant specification,
page 4, lines 11 through 20.
The rejection of claims 1 through 21 for obviousness based on Gorman is
reversed.
Claims 22 and 23
It would appear that the examiner failed to address the limitations of claims 22
and 23 in Paper No. 10 or in section (10) of the Examiner’s Answer setting forth the
grounds of rejection. In section (11) of the Examiner’s Answer, entitled “Response to
Argument,” the examiner states that :
While it was not expressly stated in paper number 10, it would have been
obvious to administer an opioid antagonist such as naloxone or naltrexone
to treat pain because narcotic antagonists can be used to counteract or
prevent excessive central nervous system depression and respiratory
depression resulting from the methadone. One would be motivated to
administer such narcotic antagonists with l-methadone because l-
methadone has a 30 fold greater ability to displace naloxone binding that
[sic] d-methadone and narcotic antagonists can be used to counteract or
prevent excessive central nervous system depression and respiratory
depression resulting from the methadone. [Id. at page 9, last paragraph]
We point out, however, that the sole reference relied on in rejecting claims 22
and 23 is Gorman. The examiner does not cite any passage or passages in Gorman
which would support the above-quoted findings in the Examiner’s Answer, page 9, last
paragraph. Simply stated, it would appear that those findings lack evidentiary support in
the record. As stated in In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
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