Appeal No. 1996-2920
Application 08/238,214
resveratrol was known to be a constituent of grapes and suggests that resveratrol is the ingredient in
wine which causes a reduction in serum lipids, and 3) CA ‘127 discloses that beneficial effects of trans-
resveratrol on blood lipids were known in the art (answer, pages 2-3). The examiner concludes
(answer, page 3):
One of ordinary skill in the art would have been motivated to employ trans-resveratrol
in methods of treating humans to raise HDL and reduce LDL, by any conventional
mode of administration, since the compound was known to be a consistent [sic,
constituent] of wine, and oral administration of the same compound was known to
produce the claimed effects in animal hosts, on its own, as well as in wine. The
optimization of amounts of ingredients to be administered is considered within the skill
of the artisan, absent evidence to the contrary.
The examiner’s statement that “oral administration of the same compound was known to
produce the claimed effects in animal hosts” does not appear to be supported by the evidence relied
upon by the examiner. The examiner has not explained, and it is not apparent, why one of ordinary skill
in the art, given that something in red wine increases blood levels of HDL-cholesterol and that
resveratrol may cause a reduction of serum lipids, would have concluded that administering trans-
resveratrol would increase HDL-cholesterol and lower LDL-cholesterol.
The examiner argues that the prior art administration of trans-resveratrol in red wine inherently
would have increased HDL-cholesterol and lowered LDL-cholesterol (answer, page 3). When an
examiner relies upon a theory of inherency, “the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily
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