Appeal No. 2001-1335
Application No. 08/843,582
First, the Bringmann I, Bringmann II and Bringmann IV
references do not disclose that the compounds described therein
are derived from plants which are “traditionally used for
treating malaria” (id.). While other references such as
Bringmann V and Ruangrungsi may contain such disclosure, these
references have not been applied against composition claims 28-
33.1 For this reason alone, the examiner’s position concerning,
and her concomitant rejection of, composition claims 28-33 are
without merit.
Additionally, this position is unpersuasive with respect to
method claims 34-45 which have been rejected over references that
include Bringmann V and Ruangrungsi. This is because a prima
facie case of obviousness is not established by the mere fact
that the compounds under consideration are derived from plants
1 We observe that Bringmann V and Ruangrungsi, like the
Bringmann I, Bringmann II and Bringmann IV references, disclose
compounds of the type defined by the appealed composition claims.
However, unlike the Bringmann I, Bringmann II and Bringmann IV
references, Bringmann V and Ruangrungsi also disclose that these
compounds are derived from plants used in folk medicine for
treating, for example, malaria. In light of these more
comprehensive disclosures, it is unclear why the examiner did not
rely upon Bringmann V and Ruangrungsi (rather than Bringmann I,
Bringmann II and Bringmann IV) as primary references in her
section 103 rejections. While such reliance would not have
resulted in sustainable rejections as discussed more fully in the
body of our decision, the examiner’s above quoted position would
have been, at least arguably, rational and germane with respect
to composition claims 28-33.
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