Appeal 2007-0860
Application 10/148,535
teaching of Harris that it is the d-threo enantiomer of methylphenidate that
has the preferred therapeutic activity (Harris p.1), we conclude that the
combination of Harris and Gross-Tsur does not render obvious a method of
treating a convulsant state, such as epilepsy, by administering an effective
amount of l-threo-methylphenidate in substantially single enantiomer form.
See KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396
(2007), (noting that it had previously held claims unobvious where the prior
art warned of risks involved in using the claimed elements. (citing United
States v. Adams, 383 U.S. 39, 51-52, 148 USPQ 479, 484 (1966)). The
Examiner has therefore failed to establish a prima facie case of obviousness,
and we are compelled to reverse the rejection.
In response to the Dissent’s comment that Harris clearly teaches that
both enantiomers are useful pharmaceuticals, citing fact findings 7 and 8
made by the Dissent, we do not contest that Harris teaches both enantiomers,
and our reversal does not rest on that ground. We do note, however, that the
actual statement in Harris referenced by fact finding 7 is “[s]ingle isomer
methylphenidate according to the invention, especially pure d-threo-
methylphenidate, can be used in therapy for the same purposes as the
racemate.” (Harris, p. 3 (emphasis ours).)
Regardless, the fact remains that Gross-Tsur specifically cautions
against using methylphenidate to treat ADHD in patients who also have a
seizure disorder. The Dissent places much of its emphasis on Gros-Tsur’s
citation to Wrobleski.3 In describing Wrobleski, Gros-Tsur stated that “in a
3 We note that Wrobleski was not part of the prior art of record on which the
rejection was based, neither is Livingston or Evans, also cited by the Dissent
(FFs 12-20).
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013