Ex Parte But et al

Board of Patent Appeals and Interferences

May 7, 2010

11224165 (B.P.A.I. May. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PUI-HAY PAUL BUT, YAN-TONG XU, PANG CHUI SHAW,
REN WANG JIANG, and PO MING HON
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Appeal 2009-010497
Application 11/224,165
Technology Center 1600
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Decided: May 7, 2010
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Before LORA M. GREEN, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of relieving cough. The Patent Examiner rejected the claims on the
ground of obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
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Application 11/224,165

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STATEMENT OF THE CASE
The invention relates to a method for relieving cough with a
composition comprising a stemoamide or tuberostemospironine compound.
(Spec. 1:4-8.) The compounds are alkaloids found in Stemona plants. For
example, the compounds “[c]roomine and stemoninine can be extracted
readily from Radix Stemonae, which is available on [the] open market.” (Id.
at 8:6-7.)
Claims 1, 3-5, 7, 8, and 21-25 are on appeal.1 Appellants provided a
copy of the appealed claims in the “Claims Appendix” to their brief. The
Examiner rejected claims 1, 3-5, 7, 8 and 21-25 under 35 U.S.C. § 103(a) as
unpatentable over Pilli2 and Lin.3

OBVIOUSNESS
The Issue
The Examiner’s position is that Pilli taught isolated compounds from
Stemona tuberose and C. japonica, including the compounds
tuberostemoamide (stemoniniamide), stemospironine, stemoninine, and
croomine. (Ans. 4.) The Examiner found that Lin taught a “method of
reducing coughing in a subject by administering a pharmaceutically effective
amount of a Stemonaceae family plant extract . . . where the genus is
Stemona or Croomia, and the species is Stemona tuberose or C. japonica.”
(Id.) According to the Examiner, Lin described the plant extract as “a total

1 Claims 9-20 are withdrawn, and all other claims are cancelled. (App. Br.
1.)
2 Ronaldo Aloise Pilli et al., Recent progress in the chemistry of the
Stemona alkaloids, 17 NAT. PROD. REP. 117-127 (2000).
3 Ge Lin et al., US 2003/0229071 A1, published Dec. 11, 2003.
Appeal 2009-010497
Application 11/224,165

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alkaloid extract.” (Id.) The Examiner concluded that it would have been
obvious to administer Pilli’s compounds to relieve cough “since the extract
of Lin et al. contains the compounds of the instant claims.” (Id. at 5.) The
Examiner found that “[t]he artisan would reasonably expect success in
administering the isolated compounds since Lin teach and claim isolation of
other compounds from the same plant species.” (Id.)
Appellants contend that (1) Pilli did not attribute antitussive activity to
the compounds it described, (2) Lin’s antitussive compounds were stenine
alkaloids, and (3) no prima facie case of obviousness was made. (App. Br. 3-
5.)
The issues on appeal are:
whether the evidence supports the rationale presented in the rejection;
and whether there was a reasonable expectation of success for relieving
cough by administering one of Pilli’s compounds.

Findings of Fact
We adopt the Examiner’s findings concerning the scope and content
of the Pilli and Lin references, as set out at page 4 in the Answer.

Principles of Law
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
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Application 11/224,165

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To sustain a conclusion of obviousness, the prior art must provide a
reasonable expectation of success for modifying a known method. E.g.,
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).

Analysis
We agree with Appellants’ argument that Pilli did not attribute
antitussive activity to the isolated compounds it described. Pilli’s Table 1 is
entitled “Stemona alkaloids isolated from Stemonacea species.” Each of the
Stemona plants listed in the table is shown to contain multiple alkaloids.
Pilli stated that crude extracts from Stemonaceae plants were known to have
antitussive effects, as the Examiner found. See Ans. at 5. That is not the
same as disclosing that each of the isolated compounds Pilli listed in Table 1
had antitussive effects. The Examiner found, and we agree, that Lin’s total
alkaloid extract contained the compounds of the instant claims (and listed by
Pilli). However, Lin does not clarify which of Pilli’s isolated compounds
would have been expected to have antitussive effects. We agree with
Appellants’ argument that the particular stenine alkaloid species Lin
described are not the species used in the appealed claims because they do not
have the formulas shown in Appellants’ claims.
The facts in this case are analogous to the facts in the case In re Kratz,
592 F.2d 1169, 1175 (CCPA 1979). The issue in Kratz was the obviousness
of “[a] process for imparting a strawberry flavor . . . to a foodstuff which
comprises adding thereto . . . a composition consisting essentially of
synthetically produced substantially pure 2-methyl-2-pentenoic acid.” Id. at
1170.
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The portion of the Kratz decision pertinent to the current appeal reads:
Moreover, s 103 requires that the determination of obviousness
be made upon a comparison of the “subject matter sought to be
patented” and “the prior art.” The prior art here, at the time the
invention was made, consists of the natural strawberry and its
attendant taste. The PTO provides no basis, found in that prior
art, for selecting 2M2PA and using it in compositions such as
those claimed by appellants.
Even if the bare lists of compounds found in strawberries were in
the prior art, those extensive lists are quite mute in directing one
having ordinary skill in the art to any particular compound for
any purpose. While recognizing that obviousness does not
require complete predictability, In re Kronig, 539 F.2d 1300, 190
USPQ 425 (CCPA 1976), we would consider it necessary, even
once 2M2PA is known, that the prior art itself further provide
some foreseeability or predictability that the compound is a
significant strawberry flavor ingredient.

Id. at 1175.
In the current appeal, there was a list of compounds in Pilli, but the
prior art did not itself further provide some foreseeability or predictability
that each of the listed compounds would have been expected to have
antitussive effects. That deficiency might have been made up by other
knowledge in the art, but the rejection did not apprise Appellants of any such
pre-existing knowledge. Without such predictability, we conclude that the
rejection’s rationale for selecting the compounds used in Appellants’
method, and a reasonable expectation of success in using the selected
compound to relieve cough, are not supported by the evidence presented in
the rejection.

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CONCLUSION
On this record, we conclude that the rejection did not present a prima
facie case for obviousness.

SUMMARY
We reverse the rejection of claims 1, 3-5, 7, 8 and 21-25 under
35 U.S.C. § 103(a) as unpatentable over Pilli and Lin.

REVERSED

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