Appeal No. 2006-3290 Page 4
Application No. 10/072,823
(‘016, page 1) and gastrointestinal disorders (‘016, page 1). Son, ‘434 and ‘016
do not teach a composition comprising lupulone.
Examiner finds that Ito and Matsui teach Humulus lupulus extracts that are
useful for treating cancer.3 Answer, page 4. Page 2 of Appellant’s specification
discloses that lupulone is known to be present in extracts of Humulus lupulus
hops. Answer, page 4. In addition to the treatment of cancer Matsui teach that a
hop extract comprising lupulone “has an efficacy on . . . gastroenteric trouble.”
Matsui, page 10. Ito and Matsui do not teach a composition comprising oridonin.
Based on this evidence, Examiner finds (Answer, page 5), “since each
component is known individually in the prior art for the same purpose, i.e. to treat
cancer, then it would have been obvious to combine the two components into
one formulation.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072
(CCPA 1980) (“it is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same purpose, in order to form
a third composition which is to be used for the very same purpose”); In re Susi,
440 F.2d 442, 445, 169 USPQ 423, 426 (CCPA 1971) (“the combination, for the
same purpose, of one additive explicitly disclosed in the prior art and another
suggested by the prior art would be at least prima facie obvious”); In re Crockett,
279 F.2d 274, 276-77, 126 USPQ 186, 188 (CCPA 1960) (“the idea of combining
them [magnesium oxide and calcium carbide] would flow logically from the
3 Appellant concedes that Ito teaches Humulus lupulus extracts as cancer metastasis inhibitors;
and Matsui “alleges that ‘a bitter principle of hops of Humulus lupulus [sic],’ prepared by aqueous
extraction of dried hops, exhibits an anti-cancer effect for cancers of the stomach, liver, lung, and
breast.” Brief, page 6.
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