Ex Parte Zhang et al

Board of Patent Appeals and Interferences

Mar 30, 2011

11122265 (B.P.A.I. Mar. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DE-CHENG ZHANG, CAN-JUN LI, JIA-SHI ZHU,
and HOWARD SUN
____________

Appeal 2010-011750
Application 11/122,265
Technology Center 1600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-14.1 We have
jurisdiction under 35 U.S.C. § 6(b).

1 Pending “[c]laims 15-46 have been withdrawn subject to a[] restriction
requirement” (App. Br. 5).
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STATEMENT OF THE CASE
The claims are directed to a method of inhibiting IL-5 secretion in a
subject. Claim 1 is representative and is reproduced below:
1. A method of inhibiting IL-5 secretion in a subject comprising:
(a) providing a composition consisting essentially of a therapeutically
effective amount of reishi extract, and
(b) administering the composition to the subject.

The rejections presented by the Examiner follow:
1. Claims 1, 3, 13, and 14 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Soo.2
2. Claims 2 and 4-12 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Soo, Chung,3 and Hobbs.4
We affirm.
Anticipation:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s finding that Soo teaches the claimed invention?
FACTUAL FINDINGS
FF 1. Soo teaches the treatment of patients with reishi fruit extract (Soo
406-410; Ans. 4).
FF 2. Soo teaches that the effective dose of reishi extract ranges from 1.5 -
9 grams per day (Soo 405: Abstract).

2 Teow Sun Soo, Effective Dosage of Ganoderma Nutriceuticals in the
Treatment of Various Ailments, Abstract, Taipei International Convention
Center (TICC), 403-412 (1996).
3 Chung et al., US 6,893,641 B2, issued May 17, 2005.
4 MUSHROOMS: An Exploration of Tradition, Healing, & Culture 96-107
(Christopher Hobbs, L.Ac., ed., Botanica Press, Santa Cruz, California,
U.S.) (1995).
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FF 3. Appellants disclose that the term “‘therapeutically effective amount’
refers to a non-toxic, but sufficient amount of an active agent, to achieve
therapeutic results in treating a condition for which the active agent is
known to be effective” (Spec. 5: 17-19).
FF 4. Appellants disclose that “the reishi composition may be administered
in an amount and frequency sufficient to provide a daily dosage of from
about 1 to 2 grams of reishi extract” (Spec. 12: 22-24).
ANALYSIS
Appellants contend that while Soo teaches the administration of reishi
extract in amounts necessary to treat a variety of ailments, the Examiner
failed to establish that Soo teaches the administration of an amount of reishi
extract that is effective to inhibit IL-5 secretion (App. Br. 11). We are not
persuaded. Instead, we agree with the Examiner’s rationale that Soo’s
administration of an amount of reishi extract to achieve therapeutic results in
treating a condition for which the reishi extract is known to be effective (i.e.,
a therapeutic amount of reishi extract as the term is defined by Appellants)
will “inherently inhibit IL-5 secretion in a subject” (Ans. 3; see also FF 3).
More specifically, we find that Soo’s teaching of an effective dosage in the
range of from 1.5-9 grams per day encompasses Appellants’ disclosed range
of about 1-2 grams per day (Cf. FF 2 and FF 4). For the foregoing reasons
we are not persuaded by Appellants’ contentions regarding the treatment of
asthma and/or allergy (App. Br. 11-13; Reply Br. 6-9).
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner’s finding that Soo teaches the claimed invention. The rejection of
claim 1 under 35 U.S.C. § 102(b) as being anticipated by Soo is affirmed.
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Because they are not separately argued, claims 3, 13, and 14 fall together
with claim 1.

Obviousness:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS
FF 5. The Examiner relies on Soo as discussed above (Ans. 4; see FF 1-2;
see also FF 3-4).
FF 6. The Examiner finds that Soo fails to teach a “composition including
cracked reishi spores, polysaccharides, triterpenes, particular dosages or
percentages of the reishi extract” (id.).
FF 7. The Examiner relies on Chung to teach the oral administration of
Ganoderma lucidum (e.g., reishi) spores to treat immunological disorders in
mammals (id.).
FF 8. The Examiner relies on Hobbs to teach “that polysaccharides and
triterpenes are naturally found in the spores of Ganoderma lucidum” (Ans.
5).
FF 9. Soo suggests that it is
Of primary importance . . . [that] the source of G. lucidum,
whether it is cultivated or from the wild, the strain and species
used, the stage of maturation and the method of extraction of
the product. If all products used are standardized then it will
facilitate to help define the optimal dosage.

(Soo 410: Conclusion.)
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FF 10. Soo suggests that reishi extract can be used to treat immunological
disorders in mammals (Soo 409: “Lupus erythematosis” and 410:
“Immunopotentiating effects”).
ANALYSIS
Appellants provide separate arguments for the following groups of
claims: (I) claims 2, 4, and 9; and (II) claims 5-8 and 10-12. Claims 2 and
10 are representative.
Claim 2:
Claim 2 depends from and further limits the composition of claim 1 to
include a cracked reishi spore extract.
Having found no defect in Soo, we are not persuaded by Appellants’
contention that “Chung and Hobbs do not cure the defects of Soo” (App. Br.
16).
We are also not persuaded by Appellants’ contention that Soo teaches
away from the use of cracked reishi spores as taught by Chung (App. Br. 16-
18). Notwithstanding Appellants’ contentions to the contrary we do not find
Soo to teach away from the use of cracked reishi spores simply because Soo
utilizes reishi fruit extract and suggests that standardization of an optimal
dosage will benefit from, inter alia, consistency in the stage of maturation
and the method of extraction of the product (FF 9).
Claim 10:
We recognize, but are not persuaded by Appellants contentions with
regard to claims 1 and 2 for the reasons set forth above (see App. Br. 18; see
also Rely Br. 10).
We also recognize Appellants’ recitation of the claim limitations of
claims 5-8 and 10-12 (App. Br. 18-19). Appellants contend, however, that
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the various “ratios/amounts” found within these claims are not a matter of
routine optimization because the Examiner has not established that IL-5
secretion can be inhibited “with a therapeutically effective amount of reishi”
(App. Br. 19; Reply Br. 10-12). We find claim 10 representative of the
claim grouping on this narrow issue.
Claim 10 depends from and further limits the reishi extract of claim 1
to comprise (a) at least one triterpene compound, and (b) at least one
polysaccharide compound.
Appellants contend that no reference on this record suggests the
treatment of IL-5 secretion with a reishi extract composition and therefore,
no manner of optimization of a composition suggested by the combination of
Soo, Chung, and Hobbs would suggest the invention of claim 10 (see App.
Br. 19-20). We are not persuaded.
The claimed method requires the administration of a reishi extract to a
subject. Soo meets this requirement of the claim (FF 1 and 5). Soo suggests
that reishi extract can be used to treat immunological disorders in mammals
(FF 10). Chung also suggests the oral administration of Ganoderma
lucidum, otherwise known as reishi, spores to mammals to treat
immunological disorders (FF 7). Accordingly, we find no error in the
Examiner’s reliance on Soo and Chung to suggest the treatment of
immunological disorders in mammals with any of reishi fruit extract, reishi
spores, or a combination of both.
Claim 10 requires the reishi extract to comprise (a) at least one
triterpene compound and (b) at least one polysaccharide compound. There
is no dispute on this record that Hobbs teaches “that polysaccharides and
triterpenes are naturally found in the spores of Ganoderma lucidum” (FF 8).
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All that remains is the requirement in claim 10, through its
dependence on claim 1, that the amount of reishi extract composition be
therapeutically effective. According to Appellants’ Specification, the term
“‘therapeutically effective amount’ refers to a non-toxic, but sufficient
amount of an active agent, to achieve therapeutic results in treating a
condition for which the active agent is known to be effective” (FF 3 and 5).
Since the combination of Soo, Chung, and Hobbs suggests the
administration of an amount of a reishi extract composition that is non-toxic,
but is sufficient to achieve a therapeutic result in treating a condition for
which the reishi extract is known to be effect – i.e., an immunological
condition – the requirement for a therapeutically effective amount of reishi
extract is suggested by the combination of references relied upon by the
Examiner.
Taken together, claim 10 is, at best, the recognition of a new benefit -
inhibition of IL-5 secretion - in the old process of treating immunological
conditions with a therapeutically effective amount of a reishi extract
composition. “It is a general rule that merely discovering and claiming a
new benefit of an old process cannot render the process again patentable.”
In re Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir. 1990). Accordingly, we are
not persuaded by Appellants’ contentions to the contrary.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claims 2 and 10 under 35 U.S.C § 103(a) as
unpatentable over the combination of Soo, Chung, and Hobbs is affirmed.
Because they are not separately argued claims 4 and 9 fall together with
claim 2; and claims 5-8, 11, and 12 fall together with claim 10.
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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

DEA

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