Ex Parte Murase et al

Board of Patent Appeals and Interferences

Mar 17, 2011

11045312 (B.P.A.I. Mar. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TAKATOSHI MURASE, SATOSHI HARAMIZU,
NORIYASU OTA, MISAKO INABA, and AKIRA SHIMOTOYODOME
____________________

Appeal 2009-009868
Application 11/045,312
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, STEFAN STAICOVICI and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009868
Application 11/045,312

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, and 7-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to method of enhancing motor function. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A method for enhancing physical activities, comprising
administering a composition consisting of essentially of an
effective amount of catechins.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Xiu US 7,074,440 B2 Jul. 11, 2006

REJECTIONS
Claims 1, 2 and 7-12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Xiu. Ans. 4.

OPINION
We have carefully reviewed the rejection on appeal in light of the
arguments of the Appellants and the Examiner. As a result of this review, we
have determined that the claimed subject matter lacks novelty over the art of
record. Therefore the rejection under 35 U.S.C. § 102 is affirmed. Our
reasons follow.
Appeal 2009-009868
Application 11/045,312

3
We accept and adopt as our own the Examiner’s findings of fact in the
tables contained on pages 4-6 of the Answer. We are further in agreement
with the Examiner’s finding that green tea leaf extract contains catechins2.
We are also in agreement with the Examiner’s ultimate finding of fact that
the subject matter of independent claims 1 and 2 is anticipated by the Xiu
reference.
Appellants argue that Xiu does not teach enhancing physical activity.
App. Br. 3. Appellants further argue that Xiu does not teach the combined
use of catechin administration and physical exercise. App. Br. 5. With
respect to the former, we believe that the disclosed mechanisms of action of
the catechins, i.e., promoting utilization of chemical fuels and promoting
utilization of stored fuels are functions that enhance physical activities.
Furthermore, we believe that the utilization of store fuels such as fat from
adipose tissue is substantially the same as Appellants’ claimed method of
promoting oxidation of fats in a subject. Xiu, col. 5, ll. 16-17.
Appellants further argue that Xiu does not disclose consumption of
the catechins combined with “regular” exercise. App. Br. 6. First, Xiu
clearly discloses consumption of the catechins and exercise. Xiu, col. 5,
ll. 28-35. Furthermore, anticipation has never required an ipsissimis verbis
test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Therefore it is
inconsequential that the exercise in Xiu is not termed “regular” exercise. It is
our finding that the disclosure of the administration of the green tea extracts

2 It has long been known in the art that green tea extracts contain flavonoids
or catechins. See, e.g., Kuznicki, U.S. Patent 5,681,569, issued Oct. 28,
1997, col. 3, ll. 20-28.

Appeal 2009-009868
Application 11/045,312

4
known to contain catechins combined with physical exercise in Xiu
anticipates the subject matter of Appellants’ claim 2.
Appellants admit that Xiu discloses that green tea may be used alone
in the practice of Xiu’s method. See, e.g., Reply Br. 2. Appellants argue that
the administration of the green tea extract does not satisfy the claim
limitation of administering a composition consisting essentially of catechins.
The transitional phrase “consisting essentially of” limits the claim to
compositions that do not contain any substances that would materially affect
the functioning of the catechins. In our view, the Examiner’s citation of Xiu
along with the knowledge in the art admitted by Appellant (Reply Br. 2), is
enough to shift the burden to Appellants to show that the additional
ingredients cited by the Appellants in the green tea materially effect the
functioning of the contained catechins. Appellants’ argument that the green
tea extracts contain caffeine is unavailing, inasmuch as the citation of Xiu
has shifted the burden to Appellants to show that other substances in the
extract materially effect the function of the catechins, and Appellants have
not demonstrated that the caffeine has any effect on the functioning of the
catechins or on Appellants’ claimed methods.
As noted above, enhanced physical activity is a relatively broad term,
and we cited several ways in which Xiu enhances physical activity and
promotes the oxidation of stored fuels such as fat from adipose tissues. Thus
we disagree with Appellants’ arguments that Xiu does not disclose
promoting the oxidation of fats. In fact we are of the view that Xiu discloses
weight loss to the same scope that weight loss appears in Appellants’
claimed subject matter. On the bottom of page 4 in the Reply Brief
Appeal 2009-009868
Application 11/045,312

5
Appellants again argue “regular” exercise. We have dealt with this
argument, supra.

DECISION
The rejection of claims 1, 2 and 7-12 is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

nlk

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