Ex Parte Fowler et al

Patent Trial and Appeal Board

Feb 13, 2017

12375582 (P.T.A.B. Feb. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/375,582 11/04/2009 Ann Fowler ES-4662-1049 8930
23117 7590 02/15/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HOFFMAN, SUSAN COE
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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 ANN FOWLER, REGINA GORALCZYK, CLAUS KILPERT,
and GOEDE SCHUELER1
Appeal 2016-000619
Application 12/375,582
Technology Center 1600
Before JOHN G. NEW, SHERIDAN K. SNEDDEN, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a method
of improving a condition responsive to serotonin or noradrenaline reuptake
inhibition. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is DSM IP Assets B.V.
(TE Heerlen, The Netherlands). (Br. 3.)
Appeal 2016-000619
Application 12/375,582
STATEMENT OF THE CASE
Claims on Appeal
Claims 11—13, 15—17, 21—23, and 28 are on appeal.2 (Claims
Appendix, Br. 22—27.) Claim 11 is illustrative and reads as follows
(emphasis added):
11. A method of improving a condition responsive to serotonin or
noradrenaline reuptake inhibition comprising
a) administering to a healthy animal, including a human, in need
thereof an effective amount of an oregano extract or of at least one of its
volatile components, with the proviso that the administration is not a nasal
administration; and
b) observing an improvement in condition, wherein the condition is
selected from the group consisting of: irritability and tiredness, physical and
mental fatigue, sleep, energy, attention and concentration, vigilance, and
regulation of hunger and satiety.
{Id. at 23.)
Examiner’s Rejections
1. Claims 11—13, 15, and 21—23 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Ando.3 (Ans. 2-4.)
2. Claims 11, 12, 15, 16, 22, 23, and 28 stand rejected under pre-AIA
35 U.S.C. § 102(b) as anticipated by Shevyrev.4 {Id. at 4—5.)
3. Claims 11, 15, 16, and 28 stand rejected under pre-AIA 35 U.S.C.
2 The claims are subject to an election of species that includes physical or
mental fatigue or energy. (Ans. 2; n.7 infra.) Claims 1—6, 18—20, and 24—27
are withdrawn from consideration as being drawn to a nonelected invention
and species. (Final Act. dated Oct. 17, 2014, at 2.)
3 Ando et al., JP 2004-002237, published Jan. 8, 2004, English translation of
record (“Ando”). References to Ando are to the English translation.
4 Shevyrev et al., RU 2113139, issued June 20, 1998, English translation of
record (“Shevyrev”). References to Shevyrev are to the English translation.
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§ 103(a) as unpatentable over Ando and Kokkini.5 (Id. at 5—6.)
4. Claims 11, 17, and 21 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Ando and LCSG.6 (Id. at 6—7.)
5. Claims 11—13, 15, 16, 22, 23, and 28 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Shevyrev. (Id. at 7.)
6. Claims 11, 17, and 21 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Shevyrev and LCSG. (Id. at 7—8.)
The claims were not separately argued, and we therefore limit our
consideration of each rejection to claim 11.
FINDINGS OF FACT
We adopt as our own the Examiner’s findings and analysis concerning
the scope and content of the prior art. The following findings are included
for emphasis and reference convenience.
FF 1. In referring to the administration of oregano extracts or their
volatile components, the Specification refers to use in “diseased or normal
healthy individuals.” (Spec. 12,11.21—26.)
FF 2. The Examiner finds that Ando teaches a method of
administering a carvacrol and thymol containing oregano extract to human
and non-human animals, that the composition can be administered to any
individual desiring an anti-aging effect, and that Ando encompasses a
preventative treatment. (Ans. 3, citing Ando claims and 2, 6, 24, 27, 28,
31, 35, 44, and 62.)
5 Kokkini et al., Autumn Essential Oils of Greek Oregano, 44
Phytochemistry 883—86 (1997) (“Kokkini”).
6 LCSG website: More about supercritical carbon dioxide,
http://web.archive.Org/web/200I0420041034/http://www.chem.leeds.ac.
uk/People/CMR/moreco2.html (“LCSG”).
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FF 3. The Examiner finds that “all individuals have serotonin and
noradrenaline pathways in the body, all individuals have the capacity to have
physical and mental fatigue, and all individuals have energy levels,” that
“Ando is considered to teach treating the same patient population as
claimed,” and that “Ando inherently anticipates the claimed invention
because [Ando] teaches administering the same composition as claimed to
the same patient population as claimed.” (Ans. 4.)
FF 4. The Examiner finds that Shevyrev “teaches a method for
increasing energy by administering a composition comprising an Origanum
vulgaris extract in beverage form,” and that “the beverage is intended to
function as a ‘preventative’ agent by increasing the body’s resistance to
disease.” (Ans. 4, citing Shevyrev Abstract and 112.)
FF 5. The Examiner finds that Shevyrev “inherently anticipates the
claimed invention because [Shevyrev] teaches administering the same
composition as claimed to the same patient population as claimed.” (Ans.
5.)
DISCUSSION
We agree with, and adopt, the Examiner’s findings, analysis, and
conclusions as set forth in the Final Action (Final Act. 6—9) and Examiner’s
Answer (Ans. 2—13). We discern no error in the Examiner’s rejections of
claims 11—13, 15—17, 21—23, and 28.7
7 The elected species initially included “condition improver,” which was
cancelled by Appellants, and the Examiner’s search was extended to the
elected species of “physical and mental fatigue” and “energy.” (Ans. 2.)
The species also included Origanum vulgare (see claims 16 and 28) and
carvacrol, thymol, thymoquinone, and thymoquinol (see claim 21). (Id.)
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Issue
Whether a preponderance of evidence of record supports the
Examiner’s finding of anticipation under 35 U.S.C. § 102(b).
Principles of Law
A claim is anticipated if a prior art reference discloses every limitation
of the claimed invention, either explicitly or inherently. In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). In considering the disclosure of a
reference for anticipation, “it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d
825, 826 (CCPA 1968). “Under the principles of inherency, if the prior art
necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.” MEHL/Biophile Int 7 Corp. v. Milgraum, 192
F.3d 1362, 1365 (Fed. Cir. 1999).
Analysis
Rejection No. 1 (Ando)
Appellants advance a couple of arguments in response to the
anticipation finding based on Ando. (Br. 13—15.) First, Appellants contend
that “ANDO’s population of recipients is one interested in combating anti­
aging symptoms,” but that Appellants are “not claiming the types of anti­
ageing conditions, namely the conditions ANDO is reciting.” {Id. at 14.)
Moreover, Appellants argue that their “invention applies serotonin or
noradrenaline reuptake inhibition, whereas ANDO teaches providing
antioxidant to a model population.” {Id.)
Second, Appellants argue that Ando “teaches the anti-ageing method
for application in a mouse model, SAMP8,” and that SAMP mice “are NOT
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healthy animals, nor an appropriate model for a healthy population.” (Id.)
In addition, Appellants contend that “///here is no indication that the ANDO
herbs, extracts, actives, or combinations would work in a healthy population
as recited in the instant claims.’ '’ (Id.)
We are not persuaded by Appellants’ arguments. The first argument
relates to the intended use of the method. However, as Appellants
acknowledge, Ando teaches use of its products for improving learning
capability and memory, which fairly teaches improving “mental fatigue” as
recited in claim 11. (Br. 13; Ans. 10—11.) Moreover, Appellants’ reliance
on the preamble recitation of “improving a condition responsive to serotonin
or noradrenaline reuptake inhibition” is similarly unpersuasive. Numerous
cases involving inherent anticipation have found that the preamble of a
method claim, which stated the purpose or use for a method that was to be
performed, was not sufficient to distinguish prior art which carried out the
same steps of the method claim, albeit for a different purpose or use. See In
re Cruciferous Sprout Litig., 301 F.3d 1343, 1351 (Fed. Cir. 2002);
MEHL/Biophile, 192 F.3d at 1365; Perricone v. Medicis Pharm. Corp., 432
F.3d 1368, 1377—79 (Fed. Cir. 2005); In re Omeprazole Patent Litig., 483
F.3d 1364, 1373 (Fed. Cir. 2007). Here, Appellants’ preamble recitation
does not distinguish Ando because Ando teaches administering the same
composition to the same population as claimed. (FF 3.)
Appellants’ second argument is directed to the claim limitation
“administering to a healthy animal,” and the contention that Ando does not
teach that its products would “work in a healthy population.'” (Br. 14.) As
an initial matter, Appellants’ focus on a mouse model in Ando is
unpersuasive because “a reference is not limited to the disclosure of specific
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working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Moreover, according to Appellants’ Specification, there are “healthy”
individuals or “diseased” individuals. (Ans. 10; FF 1.) We also agree with
the Examiner that “aging itself is clearly not a disease state” and that “the
individuals treated in [Ando] that are not described as ‘diseased’ must be
considered‘healthy.’” (Ans. 10.) Accordingly, the anticipation rejection of
claim 11 based on Ando is affirmed. (FF 2, 3.) Claims 12, 13, 15, and 21—
23 fall with claim 11.
Rejection No. 2 (Shevyrev)
Appellants argue that
the Examiner interprets the preventative action of the [Shevyrev]
beverage to imply that the population to be treated is “healthy,”
as required in the present claims. However, the Examiner’s
supposition that “prevention of a disease would only be
appropriate in an individual who has yet to develop a particular
disease state” cannot be relied upon to properly exclude
otherwise diseased or “unhealthy” individuals. That is, an
individual in poor health may still be prevented from developing
further disease.
(Br. 15-16.)
We are not persuaded. We agree with the Examiner that Shevyrev
does not teach that the treated individuals have a disease, and that Shevyrev
is not directed to treating disease, but rather directed to preventing disease.
(Ans. 11.) Given Appellants’ distinction between healthy and diseased
individuals, we find that a person of skill in the art would at least reasonably
be expected to infer that the Shevyrev method is directed to “healthy”
individuals. See Preda, 401 F.2d at 826. Accordingly, the anticipation
rejection of claim 11 based on Shevyrev is affirmed. (FF 4, 5.) Claims 12,
15, 16, 22, 23, and 28 fall with claim 11.
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Conclusion
A preponderance of evidence of record supports the Examiner’s
finding that claim 11 is anticipated by both Ando and Shevyrev. Claims 12,
13, 15, 16, 21—23, and 28 were not argued separately and fall with claim 11.
Issue
Whether a preponderance of evidence of record supports the
Examiner’s conclusion of obviousness under 35 U.S.C. § 103(a).
Analysis
Rejection Nos. 3—6
The obviousness rejections are based on Shevyrev alone or on Ando
or Shevyrev in combination with Kokkini or LCSG. (Ans. 3—8.) However,
‘“anticipation is the epitome of obviousness.’” In re McDaniel, 293 F.3d
1379, 1385 (Fed. Cir. 2002) (citations omitted).
Accordingly, as to claim 11 that is anticipated, we affirm the rejection
of claim 11 (Rejection Nos. 3—6) for obviousness as well. Claims 15, 16,
and 28 (Rejection No. 3), claims 17 and 21 (Rejection No. 4), claims 12, 13,
15, 16, 22, 23, and 28 (Rejection No. 5), and claims 17 and 21 (Rejection
No. 6) fall with claim 11.
Conclusion of Law
A preponderance of evidence of record supports the Examiner’s
conclusion that claim 11 is obvious under 35 U.S.C. § 103(a). Claims 12,
13, 15—17, 21—23, and 28 were not argued separately and fall with claim 11.
SUMMARY
We affirm the rejections of all claims on appeal.
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We limit this decision to the elected species, and take no position
respecting the patentability of the broader generic claims, including the
remaining, non-elected species.
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
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