Appeal No. 2006-1245 Page 14
Application No. 10/294,106
roots of the plant exhibit antiinflammatory activity.” Id., at page 534, right column. “The
plant also inhibited antiinflammatory and antitumor activities.” Id., citations omitted.
Thus, Thakur discloses that the whole plant, leaves, or roots of W. somnifera
have been administered to treat pathogenic conditions in which COX-2 is active.
Because the whole plant, leaves and roots inherently contain the claimed withanolides,
Thakur discloses that the claimed withanolides have been administered to treat
pathogenic conditions where COX-2 is active. Regarding the requirement in claim 3 of
a pharmaceutically acceptable carrier, we note that any of the non-withanolide
ingredients present in Thakur’s leaf, root, or whole-plant preparations can properly be
considered a carrier.
Based on the evidence before us, Thakur also discloses that the claimed
withanolides were administered in amounts effective to selectively inhibit COX-2.
Specifically, Appellants’ specification discloses the percentages of the claimed
withanolides within dried leaves. Specification, page 17, lines 21-22 (“Yields of the
withanolides are expressed in percentage dry weight of the leaves.”).
Compounds “1” through “5” correspond to the five withanolides recited in claims
1 and 3, and the first Markush group in claim 15. Specification, page 8, lines 5-15. The
concentrations of the claimed withanolides, based on the dry weight of leaves are:
0.0068% for compound 1 (Specification, page 19, lines 3-4),
0.0078% for compound 2 (page 18, lines 26-27),
0.0055% for compound 3 (page 19, line 1),
0.0032% for compound 4 (recovered as a mixture with compound 12, page 19,
lines 4-5), and
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