Ex Parte De Saizieu et alDownload PDFPatent Trial and Appeal BoardJun 7, 201612515320 (P.T.A.B. Jun. 7, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/515,320 05/18/2009 23117 7590 06/09/2016 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-4804-32 8132 EXAMINER CLARK, AMYL YNN ART UNIT PAPER NUMBER 1655 NOTIFICATION DATE DELIVERY MODE 06/09/2016 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 SCHUELER1 Appeal2014-004885 Application 12/515,320 Technology Center 1600 Before DONALD E. ADAMS, LORA M. GREEN, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to the use of rosemary extracts to improve mood, reduce stress or reduce anxiety in an animal, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants have identified the real party-in-interest as DSM IP Assets B.V. Br. 3. Appeal2014-004885 Application 12/515,320 STATEMENT OF THE CASE The invention relates to the use of rosemary extracts "for the treatment of a disorder connected to reduced neurotransmission." Spec. 4. The extracts can be used to treat depression, improve moods and reduce stress or anxiety. Spec. 5. Claims 9-22 are on appeal. Claim 9 is illustrative and reads as follows: 9. A method for improving mood, reducing stress or reducing anxiety in an animal, said method comprising administering an effective oral dose of an acetone extract of rosemary to said animal which in need thereof. The claims stand rejected2 as follows: Claims 9-22 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Tanizawa et al., JP 1997-227399 (published Sept. 2, 1997)("Tanizawa") as evidenced by Peng et al., Supercritical Fluid Extracts of Rosemary Leaves Exhibit Potent Anti-Inflammation and Anti-Tumor Effects, 71 Biosci. Biotechnol. Biochem. 2223-32 (2007)("Peng"). DISCUSSION Issue In rejecting the claims as obvious over Tanizawa as evidenced by Peng, the Examiner finds that Tanizawa teaches a method for "reducing stress comprising administering to a person suffering from stress an extract 2 The Examiner withdrew the rejection of claims 9-22 over the combination of Oshida and Peng in the Examiner's Answer. Ans. 4. 2 Appeal2014-004885 Application 12/515,320 of dried rosemary leaves, wherein the extract can be administered orally in the form of a food product or beverage and can be combined with any components used in food or beverage compositions." Final Action 2. The Examiner finds that Tanizawa also teaches that the extract may be an acetone extract. Id. According to the Examiner, [a]lthough Tanazawa [sic] does not expressly teach that the acetone extract of rosemary contains the amounts of active ingredients or that the extract contains the active ingredients as claimed, the claimed active components are intrinsic to the acetone extract of Tanazawa [sic] because the ingredients taught by Tanazawa [sic] are one and the same as disclosed in the instantly claimed invention of [Appellants]. Thus, the acetone extract of dried rosemary leaves taught by Tanazawa [sic] would be expected to intrinsically contain the same chemical profile as the dried rosemary extract claimed by [Appellants] (See Peng et al.). Id. at 2-3. The Examiner concludes that [i]t would have been obvious to modify the extract used in the method taught by Tanazawa [sic] by employing an acetone extract of dried rosemary leaves because at the time the invention was made, it was known that an acetone extract of dried rosemary leaves could be a suitable extract for treating stress in animals, particularly humans, as clearly taught by Tanazawa [sic]. Id. at 3. Appellants contend that Tanizawa does not teach the amounts of the active ingredients of the rosemary extracts, arguing further that the amounts recited in Peng for the supercritical extracts are not the same as acetone extracts. Br. 8-9. Appellants go on to argue that Tanizawa is limited to the use of rosemary extracts for aromatherapy and not oral administration as 3 Appeal2014-004885 Application 12/515,320 required by the claims. Br. 10. Appellants also argue that Tanizawa teaches away from the present invention in that the reference teaches that distillates, especially steam-distillates, and preferred, and that such distillates would not contain the same components as the claimed invention. Br. 10-11. The issue with respect to this rejection is whether the Examiner has established by a preponderance of the evidence that the claims are obvious over Tanizawa as evidenced by Peng as defined by 35 U.S.C. § 103(a). Findings of Fact FFI. Tanizawa teaches that adrenocortical hormone secretion inhibitors can relieve stress. Tanizawa i-f 6. FF2. Tanizawa teaches that essences of plants from the Lamiaceae family, such as rosemary, are adrenocortical hormone secretion inhibitors. Tanizawa i-f 7. FF3. Essences useful in the method of Tanizav,ra include "product[ s] obtained by a process in which a processed substance is obtained by drying, finely chopping, and pulverizing a plant body from one of these plants; an extract is obtained by extracting the plant body or the processed substance using a solvent and removing the solvent from the extracted product." Tanizawa i-f 7. FF4. Examples of suitable solvents useful in the method of Tanizawa include acetone. Tanizawa ,-r 7. FF5. The extracts of Tanizawa can be incorporated into "food products such as gum or candy, and into beverages such as juices and soft drinks." Tanizawa i-f 11. 4 Appeal2014-004885 Application 12/515,320 FF6. Peng teaches that acetone extracts of rosemary contain 24. 7% carnosic acid, 3.5% carnosol, 1.4 % rosmarinic acid, 0.3 % 12-methoxy- carnosic acid, and 2.7 % methyl carnosate. Peng 2227, Table 2. FF7. Peng discloses that acetone extracts of rosemary have free radical scavenging activity similar to the other extracts disclosed in Peng. Peng 2227, Table 3. FF8. Peng teaches that acetone extracts of rosemary provided comparable results to supercritical fluid extraction, but that such extracts require decoloration with active charcoal prior to HPLC analysis. Peng 2224. Principles of Law A proper § 103 analysis requires "a searching comparison of the claimed invention-including all its limitations-with the teachings of the prior art." In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995). "[W]hile an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion." Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). "The prior art's mere disclosure of more than one alternative does not constitute a teaching away from ... alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). 5 Appeal2014-004885 Application 12/515,320 "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Analysis Claim 9 is representative of the rejected claims and recites a method for improving mood or reducing stress or anxiety by the oral administration of acetone based rosemary extracts. We agree with the Examiner that the method of claim 9 would have been obvious to one of ordinary skill in the art at the time the invention was made. Tanizawa discloses that extracts derived from plants of the Lamiaceae family, such as rosemary extracts to relieve stress. FFl--4. Tanizawa teaches that the extracts can be included in food or beverages. FF5. Solvent extraction using acetone can be used to prepare the rosemary extracts of Tanizawa. FF3--4 It would have been obvious, therefore, to one of ordinary skill in the art to use acetone to prepare a rosemary extract and use it to reduce stress. Appellants argue that Tanizawa does not teach that the acetone extract of rosemary contains the amount of active ingredients or that the extract contains the active ingredients claimed. Br. 8. Similarly Appellants argue that Tanizawa only teaches steam distillation and that resulting extract would not have the required ingredients. Br. 10. We are unpersuaded. As noted by the Examiner, Tanizawa teaches that acetone may be used to make a rosemary extract and that the acetone extract of rosemary may be used to 6 Appeal2014-004885 Application 12/515,320 reduce stress. Ans. 4--5; FF 1--4. Thus, the acetone extracts of rosemary taught by Tanizawa would contain the ingredients necessary to relieve stress. Appellants go on to argue that Tanizawa is limited to the use of acetone extracts of rosemary for aromatherapy and not oral administration. Br. 10. We are unpersuaded. Tanizawa specifically teaches that the extracts can be incorporated into food. FF5. While these products may exhibit an aroma that includes the extracts, common sense dictates that the food is ingested, which constitutes oral administration. Appellants' remaining argument addressing the teachings of Peng have been considered and are unpersuasive. As discussed above, Tanizawa teaches the use of an acetone extract of rosemary to relieve stress. Peng is only offered as evidence of the composition of acetone extracts of rosemary, which is not an issue with respect to claim 9. Conclusion of Law We find that the Examiner has established by a preponderance of the evidence that claim 9 is obvious in view of Tanizawa combined with Peng as defined by 35 U.S.C. § 103(a). Claims 10-22 have not been argued separately and therefore fall with claim 9. 37 C.F.R. § 41.37(c)(l)(iv). SUMMARY We affirm the rejection of claims 9--22. 7 Appeal2014-004885 Application 12/515,320 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