Appeal No. 2006-3290 Page 6
Application No. 10/072,823
Appellant asserts that ‘016, ‘434, Son or Ito do not teach the type of
cancer that can be treated with the compound or extract. Brief, pages 5-6.5
However, as discussed above, there is no requirement in Appellant’s claim 1 that
cancer generally or any particular type of cancer be treated. As set forth in In re
Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974), “terms [that]
merely set forth the intended use for ... an otherwise old composition ... do not
differentiate the claimed composition from those known in the prior art.” The
Pearson court explained that “[i]t seems quite clear to us that one of the
compositions admitted to be old by the appellant would not undergo a
metamorphosis to a new composition by labeling its container to show that it is a
composition suitable for [another use].” Id. The evidence of record establishes
that both oridonin and lupulone are individually effective for the treatment of
gastrointestinal disorders (stomachache). See ‘016, page 1 (oridonin) and
Matsui, page 10 (lupulone). Accordingly, we find that the evidence of record
establishes that a person of ordinary skill in the art would have been motivated to
combine oridonin and lupulone into a composition for the treatment of
gastrointestinal disorders. See Kerkhoven, Susi, and Crockett.
Nevertheless, since the record before us is focused on the combination of
the references for the treatment of cancer we will address this issue. Appellant
contends that “[t]he cited references do not provide the motivation to combine
oridonin and lupulone to treat the same types of cancers, let alone breast and
5 Appellant recognizes that ‘016, ‘434, Son and Ito do not teach the treatment of any particular
cancer. Nevertheless, Appellant asserts (Brief, page 9), “[b]ased on the references cited by the
Examiner, there appears to be no overlap between the cancer-type specificity of oridonin and
lupulone.” What is unclear on this record is how Appellant can reach this conclusion when she
recognizes that four of the five references relied upon teach a non-specific anti-cancer activity.
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