Appeal No. 2006-1245 Page 19
Application No. 10/294,106
specification that as little as one microgram of withanolide per gram of composition is
sufficient to induce selective inhibition. Specification, page 26, lines 5-7. Based on
these facts, we hold that Patwardhan anticipates claim 16.
Summary
We reverse the rejection for indefiniteness and vacate the examiner’s rejections
based on the prior art. We also enter two new rejections based on anticipation. We
have considered the arguments in the Appeal Brief, but do not find them persuasive
with respect to the new grounds of rejection.
Time Period for Response
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial review.
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner . . . .
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