Appeal No. 2006-1245 Page 12
Application No. 10/294,106
plant” (Answer, page 5), fails to establish inherency, without further explanation or
evidence. Conversely, as noted supra, Appellants’ response does not explain why the
references do not inherently disclose the withanolides.
In our view, neither the examiner nor Appellants have recognized the full breadth
of the claims. We therefore vacate the examiner’s rejections and enter the following
new grounds of rejection.
New Grounds of Rejection
1. Anticipation of claims 1, 3, 5 and 15
Under the provisions of 37 CFR § 41.50(b), we enter the following new ground of
rejection: claims 1, 3, 5 and 15 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Thakur.
As discussed supra, claims 1, 3 and 5 are directed to selectively inhibiting the
COX-2 enzyme relative to the COX-1 enzyme, by administering an effective amount of
one or more of five specific withanolides. Claims 3 and 5 require the inhibition to be in
vivo, and in a mammal. Claim 15 is also directed to inhibiting the COX-2 enzyme
relative to the COX-1 enzyme, by administering an effective amount of one or more of
the five withanolides enumerated in claims 1 and 3, along with one or more of seven
distinct withanolides also enumerated in the claim.
Appellants isolated the five withanolides recited in the first Markush group in
claims 1, 3 and 15, from the leaves of W. somnifera. Specification, pages 8-9.
Therefore, any prior art disclosure of unfractionated leaves of W. somnifera necessarily,
or inherently, discloses a composition which contains the five withanolides recited in
claims 1, 3, 5 and 15. Moreover, because the leaves are part of the plant, any
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