Ex Parte Xue et al

Board of Patent Appeals and Interferences

Jun 30, 2006

09909862 (B.P.A.I. Jun. 30, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HONG XUE, HUI KWOK MIN,
HONGYAN WANG and HUI ZHENG
__________

Appeal No. 2006-0285
Application No. 09/909,862
__________

ON BRIEF
__________

Before MILLS, GRIMES, and GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 13-16 and 19-22. Claim 19 is representative of the
subject matter on appeal, and reads as follows:
19. A method of treating anxiety in a patient comprising administering an
effective non-toxic dose of wogonin to the patient.

The examiner relies upon the following reference:
Cassels et al. (Cassels) 5,756,538 May 26, 1998

Appeal No. 2006-0285 Page 2
Application No. 09/909,862

Claims 13-16 and 19-22 stand rejected under 35 USC § 103(a) as being
obvious over Cassels. After careful review of the record and consideration of the
issues before us, we reverse.
DISCUSSION
According to the Examiner’s Answer:
Cassels [ ] teaches a method of treating anxiety comprising
administering to the patient an effective non-toxic amount of substituted
flavonoid, particularly substituted flavone, wherein the substituents may be
hydroxyl group or low alkyl alkoxyl groups. Cassels particularly prefer
flavone wherein the 5, and 7 positions have hydroxyl substituents. See,
particularly, the claims. Note, [sic] chrysin, as claimed in claim 6 by
Cassels [ ] is 5, 7-dihydroxyflavone.
Cassels [ ] does not teach expressly the employment of the
flavone herein with R4 is a methoxy group[ ], [sic] i.e. 5, 7
dihydroxy, 8-methoxyflavone (wogonine).
However, it would have been prima facie obvious to a
person of ordinary skill in the art, at the time the invention was
made, to treat anxiety by employing a flavone with hydroxyl groups
at 5, and 7, and a methoxyl group at 8 position (R4 as depicted by
Cassels). A person of ordinary skill in the art would have been
motivated to treat anxiety by employing a flavone with hydroxyl
groups at 5, and 7, and a methoxyl group at 8 position (R4 as
depicted by Cassels) because Cassels expressly prefer flavone
with 5 and 7 dihydroxyl groups. Further, methoxyl group is known
to be useful as a substituent at 8 position (R4). The selection of
methoxyl group herein is seen to be a selection from amongst
equally suitable functional groups and as such obvious. Ex parte
Winters, 11 USPQ2d 1387 (at 1388). . . .
It should be noted that the compound employed herein,
wogonin, is an old and well-known compound found in herbs with
very low toxicity. See pages2 [sic] in the specification.

Examiner’s Answer, pages 3-4.

Appeal No. 2006-0285 Page 3
Application No. 09/909,862

Appellants argue that there is no motivation to select the claimed species
from the genus for Formula I disclosed by Cassels for the treatment of anxiety.
See Appeal Brief,1 page 5. We agree, and the rejection is reversed.
The burden is on the examiner to set forth a prima facie case of
obviousness. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99
(Fed. Cir. 1988). In order to make a prima facie case of obviousness based on
the structural similarity between the claimed compound and the compound
disclosed by the prior art, not only must the structural similarity exist, but the prior
art must also provide reason or motivation to make the claimed compound. See
In re Dillon, 919 F. 2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en
banc), In re Mayne, 104 F. 3d 1339, 1341, 41 USPQ2d 1451, 1454 (Fed. Cir.
1997); In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 256 (CCPA 1979).
Moreover, the prior art has to enable the ordinary artisan to make the claimed
compound. See Payne, 606 F.2d at 314.
In the case at hand, Cassels teaches variants of Formula I in which “R1,
R2, R3 and R4, R5 and R8 are independently selected from H, OH, R, NO2, halo,
OR, NH2, NHR, NR2, COOR, COOH, CN or a sugar group;” in which “R is a C1-6
alkyl or alkenyl.” Id., Column 1, lines 45-63. One of the preferred compounds,
as noted by the examiner, is chrysin, in which R1 and R3 are OH.

1 All references to the Appeal Brief are to the Amended Appeal Brief, files January 6, 2005, and stamped
January 10, 2005.

Appeal No. 2006-0285 Page 4
Application No. 09/909,862

The compound recited in the claims, wogonin, reads on Formula I, not
only in which R1 and R3 are OH, but R4 is OCH3. Cassels teaches that preferred
compounds are ones in which R1, R3 and R5 are hydroxy; R1 and R3 are hydroxy
and R5 is halo; R3 is hydroxy and R1 is hydrogen; R3 and R1 are both hydroxy, R2
and R4 are both halo, and more preferably R5 is OH or halo. See id. at Column
3, lines 20-26. The only compound that contains a methoxy group taught by
Cassels is 5-hydroxy, 7-methoxyflavone ( R1 is OH and R3 is OCH3), see id. at
Column 10, Table II, which the reference teaches “show[s] weak benzodiazepine
ligand behaviour,” see Column 9, lines 48-56.
Thus, we can find nothing in the Cassels reference that would lead one of
ordinary skill in the art to use 5,7-dihydroxy, 8-methoxyflavone (wogonine) in the
treatment of anxiety. The examiner relies on Ex Parte Winters, 11 USPQ2d
1387, 1388 (Bd. Pat. App. & Int. 1989), but that case states that “[g]enerally
speaking, there is nothing unobvious in choosing ‘some’ among ‘many’
indiscriminately.” In the case before us, however, only one was chosen, and the
prior art provides no motivation to make and use the claimed compound in the
treatment of anxiety.
Moreover, appellants have provided evidence of the unpredictability of
changing the substituents in Formula I of Cassels by supplying the Huen2
reference, which the examiner summarily dismissed as being post filing date.
Huen, however, merely demonstrates that 5,7-dihydroxy-6-methoxyflavone, a

Appeal No. 2006-0285 Page 5
Application No. 09/909,862

compound which falls within Formula I of Cassels (R1 and R3 are OH, and R2 is
OCH3), in which the methoxy group is meta to the position in the claimed
compound, has no anxiolytic properties, and in fact abolishes the anxiolytic
effects of diazepam. See Appeal Brief, page 7.
CONCLUSION
Because the examiner has not set forth a prima facie case of
obviousness, the rejection of record is reversed.
REVERSED

Demetra J. Mills )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Eric Grimes )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lora Green )
Administrative Patent Judge )

2 Huen et al. (Huen), “5,7-Dihydroxy-6-methoxyflavone, a benzodiazepine site ligand isolated
from Scutellaria baicalensis Georgi, with selective antagonistic properties,” Biochemical
Pharmacology, Vol. 66, pp. 125-32 (2003).

Appeal No. 2006-0285 Page 6
Application No. 09/909,862

LG/dym

Appeal No. 2006-0285 Page 7
Application No. 09/909,862

Hamilton, Brook, Smith & Reynolds, P.C.
530 Virginia Road
P.O. Box 9133
Concord, MA 01742-9133