Appeal 2007-0860
Application 10/148,535
Discussion
The prior art, considered as a whole, would have suggested the
claimed invention with a reasonable likelihood of success. (FFs 6-29.) That
is all the law requires to support a prima facie case of obviousness. See, e.g.,
In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). It does not require
“absolute predictability.” Id. While Gross-Tsur or Carlson may not have
been sufficient to instill a reasonable expectation of success in the skilled
artisan, these references cannot be read in a vacuum. Further, their very
limited teachings (FFs 9-10, 21-24) would not have been sufficient to
dissuade the skilled artisan from proceeding in view of the prior art
teachings as a whole (FFs 20, 29). Nor would Gross-Tsur’s unsupported
concerns regarding using MPH to treat epilepsy have discouraged the skilled
artisan (FFs 10, 12). Rather, the skilled artisan would have moved forward
with “caution,” as is the general rule in developing pharmaceuticals.
The value of obtaining exclusivity for several uses of a known,
successful commercial product like Ritalin® would likely have encouraged
moving forward as Appellants did, even in the absence of other teachings.
See KSR Int’l, 127 S. Ct. at 1741 (“it often may be the case that market
demand, rather than scientific literature, will drive design trends”).
The teachings of Wroblewski (described by Gross-Tsur) and of El-
Mallakh would have provided the skilled artisan with a reasonable
expectation of success in treating epilepsy and bipolar disorder with
Ritalin® (FFs 11-20; 25-29). This, in combination with Harris’ teachings
regarding the pharmaceutical value of both enantiomers (FFs 6-8), would
have rendered the claimed invention prima facie obvious (FFs 20, 29).
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