Ex Parte De Saizieu et alDownload PDFPatent Trial and Appeal BoardSep 28, 201613433318 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/433,318 03/29/2012 23117 7590 09/30/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Antoine De Saizieu UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. ES-4804-33 2712 EXAMINER CLARK, AMYL YNN ART UNIT PAPER NUMBER 1655 NOTIFICATION DATE DELIVERY MODE 09/30/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTOINE DE SAIZIEU, ANN FOWLER, REGINA GORALCZYK, CLAUS KILPERT, and GOEDE SCHUELER. 1 Appeal2014-004381 Application 13/433,318 Technology Center 1600 Before DONALD E. ADAMS, MELANIE L. MCCOLLUM, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to method for reducing stress using rosemary extracts which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The present invention is directed to acetone rosemary extracts which are useful in treating disorders related to reduced neurotransmitter levels 1 Appellants identify the Real Party in Interest as Intematix Corporation. Br. 1. Appeal2014-004381 Application 13/433,318 such as anxiety and stress as well as methods for using acetone rosemary extracts. Spec. 1. Claims 11-17 are on appeal2 . Claim 11 is illustrative and reads as follows: 11. A method for inhibiting uptake of a ligand by its neuroreceptor comprising: administering an effective oral dose of an acetone rosemary extract to animals including humans which are in need thereof; and observing at least one of the following conditions, selected from the group consisting of: improved mood, reduced anxiety, reduced obsessive- compulsive behavior, improved sleep, alleviation of stress- related symptoms, and reduced irritability. Claims 11-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tanizawa3. DISCUSSION Issue In rejecting the pending claims the Examiner finds that "Tanizawa teaches a method of suppressing the secretion of an adrenocortical hormone, which is an indicator of stress and reducing the concentration of the adrenocortical hormone comprising administering an extract of rosemary, wherein the extract of rosemary can be obtained by extraction with acetone." 2 The Examiner also rejected the pending claims under non-statutory obviousness-type double patenting over claims 9-14 of Application 12/515,320. Final Act. 2--4. Application 12/515,320 has been abandoned rendering this rejection moot. 3Tanizawa et al., JP 1996-65472, published Sep. 2, 1997 ("Tanizawa") 2 Appeal2014-004381 Application 13/433,318 Final Act. 2. The Examiner finds that while the method taught by Tanizawa does not specifically mention inhibiting uptake of a ligand or increasing serotonin or noradrenaline in an animal's brain, these effects would have been inherent to the method of using the extract taught by Tanizawa. Id. The Examiner concludes that it would have been obvious to one skilled in the art to modify the method of Tanizawa to use the acetone extract and that one skilled in the art would have had a reasonable expectation that using the acetone extract of rosemary would reduce stress in a person. Final Act. 2-3. Appellants contend that there is no reasonable expectation that the proposed combination would succeed. Br. 8-9. Appellants also argue that Tanizawa only teaches administration of rosemary via the olfactory route and not oral administration. Br. 9. Appellants next argue that Tanizawa does not teach or suggest an effective amount for oral administration. Br. 9- 10. Appellants conclude by arguing that Tanizawa does not teach "a method of inhibiting the uptake of a ligand by its neuroreceptor" nor does it teach "increasing the amount of serotonin or noradrenaline in an animal's brain" as recited in claims 11 and 14. Br. 11-12. The issue with respect to this rejection is whether the Examiner has established by a preponderance of the evidence that claims 11-17 would have been obvious over Tanizawa as defined by 35 U.S.C. § 103(a). Findings of Fact We adopt as our own the Examiner's findings and analysis. The following findings are included for emphasis and reference convenience. 3 Appeal2014-004381 Application 13/433,318 FF 1. Tanizawa discloses adrenocortical hormone secretion inhibitors comprising an extract of a plant from the Lamiaceae family. Tanizawa Abstract. FF2. Tanizawa teaches that adrenocortical hormone secretion inhibitors inhibit the secretion of adrenocortical hormones which are an indicator of stress. Tanizawa i-f 6. FF3. Rosemary is an example of a plant of the Lamiaceae family that can be used in the practice of the invention disclosed in Tanizawa. Tanizawa i-f 7. FF4. Acetone solvent extraction can be used to prepare the extracts used by Tanizawa. Tanizawa i-f 7. FF5. The extracts of Tanizawa can be used in food products in amounts ranging from 0.01 % to 30% by weight. Tanizawa i-f 11. FF6. The Specification teaches that the acetone extract of rosemary should be present in amounts ranging from .0001 to 5 weight percent. Spec 11, 1. 31-12, 1. 2. Principles of Law The claim preamble does not further limit claims if it merely states a purpose or intended use of subject matter. Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951) "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. That is not to say that the claimed composition having a narrower range is unpatentable. Rather, the existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his 4 Appeal2014-004381 Application 13/433,318 invention would not have been obvious." In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). "Newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent." Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 376 (Fed. Cir. 2001). Analysis Claim 11 is representative of the rejected claims and is directed to administration of an acetone rosemary extract to inhibit uptake of a ligand by its neuroreceptor thereby alleviating stress. We agree with the Examiner that the subject matter of claim 11 would have been obvious to one skilled in the art at the time the invention was made. Tanizawa teaches the preparation of acetone extracts of rosemary. FF3 and 4. The extracts in Tanizawa can be incorporated into food products. FF5. Tanizawa teaches that the extracts can be used to inhibit adrenocortical hormone secretion which reduces stress. FFl and 2. Tanizawa teaches that for food products the amounts of the extracts can range from 0.01 % to 30 % by weight. FF5. This falls within the effective range recited for the claimed method. FF6. We agree with the Examiner that Ans. 2 [i]t would have been obvious to modify the method taught by Tanizawa by using an acetone extract of rosemary because at the time the invention was made, it was known that acetone could be used as an extraction solvent for obtaining a stress relieving extract and that rosemary was a plant that could be extracted with a solvent for stress relief as clearly taught by Tanizawa. 5 Appeal2014-004381 Application 13/433,318 Appellants argue that Tanizawa does not teach the extracts disclosed therein would exhibit the effects of "improving mood, reducing anxiety, reducing obsessive-compulsive behavior, improving sleep, alleviating stress- related symptoms, or reducing irritability." Br. 7-8. We are unpersuaded. Tanizawa specifically teaches that the extracts inhibit adrenocortical hormone secretion which is associated with stress. FF3. One skilled in the art would understand that the extracts alleviate stress as called for in the instant claims. Moreover, as Appellants point out, Tanizawa specifically teaches that one of the effects of extracts is to reduce stress. Br. 9, Tanizawa iT 10. Appellants also argue that Tanizawa is directed to administration via the olfactory route and not oral administration. Again, we are unpersuaded. Tanizawa specifically teaches the incorporation of the extracts in foods. FF5. One skilled in the art would understand this to teach oral administration. Appellants next argue that one skilled in the art would not have found Tanizawa's teaching of an effective amount for olfactory administration of the extracts to be the effective amount for oral administration. Br. 10. Appellants' argument ignores the fact that Tanizawa teaches specific amounts of extracts that are to be incorporated into foods and that those amounts fall within the effective amount ranges recited in the instant specification. FF5 and 6. With respect to claims 11 and 14, Appellants argue that the Examiner has failed to show that Tanizawa teaches "a method of inhibiting uptake of a ligand by its neuroreceptor" or "a method of increasing the amount of 6 Appeal2014-004381 Application 13/433,318 serotonin or noradrenaline in an animal's brain" as recited in the preambles of claims 11 and 14 respectively. Br. 11 and 14. We are unpersuaded. In both claims 11 and 14, the preambles merely state the intended purpose of the claimed method and does not limit the claims. Kropa v. Robie, 187 F .2d at 152. In addition, we agree with the Examiner's findings that [s]ince the amounts of the disclosed effective amounts of the ingredients were taught in Tanizawa, the mechanism is inherent to the method taught by Tanizawa, particularly since the mode of administration for the same purpose of treating stress claimed by Appellants was clearly taught by Tanizawa and, thus, the preamble does not patentably distinguish the two methods. Ans. 5. Conclusion of Law We conclude that the Examiner has shown by a preponderance of the evidence that claims 11 and 14 would have been obvious over Tanizawa under 35 U.S.C. § 103(a). Claims 12 and 15-174 have not been argued separately and therefore fall with claims 11and14. 37 C.F.R. § 41.37(c)(l)(iv). SUMMARY We affirm the rejection of claims 1-17 under 35 U.S.C. § 103(a). 4 Appellants indicated that there was an independent basis for the patentability of claim 1 7, however no separate arguments were presented for claim 1 7. Br. 7. 7 Appeal2014-004381 Application 13/433,318 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation