Appeal 2007-0860
Application 10/148,535
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. at 7-8.)
Appellants reiterate their arguments as to Harris, and argue that
Carlson does not remedy the shortcoming of Harris (Br. 8). With respect to
Carlson, Appellants argue that “although Carlson [ ] disclose[s] studies in
which children diagnosed with multiple disorders, including bipolar
disorder, are given a racemic mixture of methylphenidate (as well as
lithium), there is no teaching whatsoever by Carlson [ ] regarding the use of
[l-threo-methylphenidate] to treat bipolar disorder.” (Id.) We agree that the
Examiner has failed to set forth a prima facie case of obviousness, and the
rejection is reversed.
Carlson is drawn to looking at children that exhibit symptoms of both
ADHD and bipolar disorder (id. at 262). Carlson’s study asks the question
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