Appeal No. 2006-1245 Page 9
Application No. 10/294,106
we do not agree with Appellants that the claims exclude the presence of ingredients not
recited in the claims.
3. Anticipation rejections on appeal
The examiner also rejected claims 1, 3, 5, 15 and 16 under 35 U.S.C. § 102(b)
as being anticipated by Tomi,1 Kashinath,2 Takatori,3 Ota,4 Att-ur-Rahman,5
Patwardhan,6 Chavali,7 Matsuda,8 Thakur,9 or Anjaneyulyu,10 and under 35 U.S.C.
§ 102(a) as being anticipated by Kameyama.11
The examiner reasoned that
[t]he references each teach that an extract from Withania somnifera
is administered to a patient. The plant extract of the references inherently
contains the withanolide since it is simply an extract of the claimed plant.
The claims encompass using the same extract which will inherently
contain the same components since it is the same exact plant extract that
[A]ppellant[s] used in [their] invention. Thus, the claims are anticipated by
the cited references.
Answer, page 5. The examiner’s rationale for the rejection under § 102(a) is
substantially identical. Id.
1 Tomi et al., WO 00/67768, published November 16, 2000 (English equivalent U.S. Patent 6,866,872,
issued March 15, 2005).
2 Kashinath, ZA 9500908, published December 27, 1995. This document was provided as a Derwent
abstract only, as the USPTO library was unable to obtain a copy of the entire reference, despite
contacting the South African patent office. See Office Letter mailed January 4, 2006.
3 Takatori, JP 10-36216, published February 10, 1998.
4 Ota et al., JP 2001-58951, published March 6, 2001.
5 Atta-ur-Rahman et al., “Two New Withanolides from Withania Somnifera,” Heterocycles, Vol. 34, No. 4,
pp. 689-698 (1992).
6 Patwardhan, U.S. Patent 5,494,668, issued February 27, 1996.
7 Chavali et al., U.S. Patent 5,683,698, issued November 4, 1997
8 Matsuda et al., “Structures of Withanosides I, II, III, IV, V, VI and VII, New Withanolide Glycosides, from
the Roots of Indian Withania Somnifera DUNAL. and Inhibitory Activity for Tachyphylaxis to Clonidine in
Isolated Guinea-Pig Ileum,” Bioorganic & Medicinal Chemistry, Vol. 9, pp. 1499-1507 (2001).
9 Thakur et al., Major Medicinal Plants of India, Central Inst. of Medicinal and Aromatic Plants, Lucknow,
India, pp. 531-535 (1989).
10 Anjaneyulyu et al., “A new withanolide from the leaves of Withania somnifera,” Indian Journal of
Chemistry, Vol. 36B, pp. 161-165 (1997).
11 Kameyama et al., JP 2002-145794, published May 22, 2002.
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