Appeal No. 2006-1066 Page 10
Application No. 09/810,109
that CDP and CDP-choline act synergistically with uridine containing compounds and
Hata teach[es] that uridine compounds are effective in treating alcoholics.” Examiner’s
Answer, page 9, lines 18-21. Appellant argues that none of Zappla, Hata, or Watkins
discloses the administration of CDP. Appeal Brief, page 16, lines 7-10. In particular,
Appellant argues that “the Examiner has not provided a citation for the alleged teaching
of Watkins, and Appellant finds no reference to the compound CDP in Watkins.” Reply
Brief, page 13, lines 12-17.
Appellant’s argument raises valid questions about the examiner’s prima facie
case with respect to claim 8. However, we agree with the examiner that the method of
claim 8 is unpatentable because we hold that Hata describes the claimed method.
As discussed above, Hata describes the administration of a uridine-containing
compound to a mammal having an alcohol dependency. As also discussed above,
claim 8 only limits one member of the Markush group recited in claim 1 (i.e., it limits the
cytidine-containing compound to CDP but does not require administering CDP).
Therefore, claim 8 reads on administering a uridine-containing compound to a mammal
having an alcohol dependency. Thus, Hata describes the method of claim 8 for the
same reasons that it describes the method of claim 1. Anticipation is the epitome of
obviousness. In re McDaniel, 293 F.3d at 1385-1386, 63 USPQ2d at 1466. Therefore,
we affirm § 103 rejection of claim 8. However, because our reasoning differs from that
of the examiner, we designate our affirmance as a new ground of rejection, with respect
to claim 8, in order to give Appellant a fair opportunity to respond.
c) Claims 12 and 13
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