Appeal No. 2006-0881
Application No. 09/928,139
Armstrong because producing higher yields of a desirable single isomer is expected, and such
expectation is the attributes taught by the prior art” (answer, page 10).
The examiner’s obviousness conclusion is not supported by the here applied prior art. As
more thoroughly detailed in the supplemental brief and reply brief, none of the secondary
references applied by the examiner contain any teaching or suggestion of racemizing
methylphenidate or any similar compound containing two chiral centers and thereby obtaining a
mixture of all four stereoisomers (as required by the rejected claims) based upon a reasonable
expectation of success. See In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988) (obviousness under § 103 requires a reasonable expectation of success).
It follows that the § 103 rejection of claims 1-6 and 8 as being unpatentable over Zeitlin
or Armstrong in view of the Miller Chemical Abstracts, the Barry Chemical Abstracts or Miller
‘261 cannot be sustained.
In discussing her § 103 rejection of claims 1-8, the examiner has made clear that the
additionally applied Harris reference is relied upon solely for the limitation of dependent claim 7
(see pages 11 and 13 of the answer). Thus, as applied by the examiner, Harris fails to supply the
above-discussed deficiencies of the other applied references. For this reason alone, we cannot
sustained the examiner’s § 103 rejection of claims 1-8 as being unpatentable over Zeitlin or
Armstrong in view of the Miller Chemical Abstracts, the Barry Chemical abstracts or Miller ‘261
in view of Harris.3
3 As an additional matter of concern regarding this rejection, we observe that the examiner has not even attempted
to rebut the appellants’ extensive explanation of why the Harris patent should be regarded as disqualified prior art
under 35 U.S.C. § 103(c). It was inappropriate for the examiner and for her appeal conferees to have maintained to
this rejection while failing to proffer any rebuttal whatsoever to the appellants’ disqualification argument.
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