Appeal No. 2001-1779
Application No. 09/398,898
Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed.
Cir. 1991).
The examiner’s rationale for rejecting claim 2 over WO ‘069 is set forth at
page 3 of the Examiner’s Answer as follows:
WO ‘069 discloses an isoflavone containing composition
obtained by extraction of dried plant material with an
aqueous:organic solvent extract (page 18, lines 4-8). The solvent
may contain as much as 99.9% of the organic solvent. Chickpea
as a suitable dried plant for extraction is disclosed at page 10, line
22. Topical products are disclosed at page 14, line 4.
The examiner has not established that WO ‘069 anticipates claim 2.
Claim 2 requires the extract to have “an estrogenic activity equivalent to at least
1 nM of estradiol.” In the paragraph bridging pages 2 and 3, WO ‘069 discloses,
that “oestradiol” is present in certain plants. However, the examiner’s statement
of rejection with respect to WO ‘069 fails to address the limitation in claim 2
requiring the extract to have “an estrogenic activity equivalent to at least 1 nM of
estradiol.”
To rebut appellants’ argument in this regard (see Appeal Brief, page 10),
the examiner states on page 5 of the Examiner’s Answer:
[A]ppellants disclose at Table 1 that the amount of organic chickpea
extract that provides estrogenic activity at least equivalent to 1 nM
of estradiol is at least 0.1 µg/ml (emphasis added). WO ‘069 is
directed to providing estrogenic activity by administering phyto-
estrogens extracted from plants such as chickpea. WO ‘069
teaches amounts of organic solvent plant extract in much larger
quantities than instantly disclosed. For example, see claim 7 for 20
to 200 mg per dosage unit. The compositions of WO ‘069
inherently have estrogenic activity at least equivalent to 1 nM of
estradiol. There is no data or evidence of record that WO ‘069
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