Appeal 2007-0860
Application 10/148,535
Gross-Tsur is cited for disclosing “the usefulness of methylphenidate
for treating epilepsy patients.” (Id.)
The Examiner concludes:
A person of ordinary skill in the art would have been
motivated to use the single isomer disclosed by Harris [ ] in
Gross-Tsur's method because a single enantiomer would have
been expected to be similarly useful as the racemic mixture. As
stated above, the Examiner cited prior art teaches
methylphenidate (Ritalin) as a racemic mixture, placing the
skilled artisan in possession of both optical isomers (i.e., 1- and
d-threo-methylphenidate). Absent some difference in kind
between the various isomers the skilled artisan would have seen
each isomer as prima facie obvious (see In re Adamson and
Duffin, 125 USPQ 233 (CCPA 1960)[)]. The skilled
artisan would have expected optical isomers to be separable and
isomers so separated to exhibit physiological effects at varying
levels. Possessing a compound known to contain chiral centers,
places all the resultant compounds in the skilled artisan's
possession. It would follow therefore that the instant claims
recite prima facie obvious subject matter and are properly
rejected under 35 USC 103. As admitted on the record, threo-
methylphenidate is taught by the Examiner cited prior art as
optically active. Thus, use of one or another optical isomer by
the skilled artisan would have seen as prima facie obvious,
absent some difference in kind between the various isomers. see
In re Adamson and Duffin, 125 USPQ 233 (CCPA 1960).
(Id.)
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993) (citations omitted). In order to
determine whether a prima facie case of obviousness has been established,
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