In Re Gee

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: GILBERT C. GEE,
Appellant
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2015-1145
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 10/602,404.
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Decided: June 8, 2015
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DAVID E. BENNETT, Coats & Bennett, PLLC, Cary,
NC, for appellant.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee. Also represented by SARAH EMILY CRAVEN, AMY
J. NELSON.
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Before LOURIE, PLAGER, and DYK, Circuit Judges.
PER CURIAM.
Gilbert C. Gee (“Gee”) appeals from the decision of the
United States Patent and Trademark Office (“PTO”)
Patent Trial and Appeal Board (“Board”), affirming the
Examiner’s decision to reject claims 38, 39, and 41–43 of
2 IN RE: GEE
Gee’s U.S. Patent Application 10/602,404 (the “’404 appli-
cation”) under 35 U.S.C. § 103(a) (2006) and claims 38
and 41–43 under 35 U.S.C. § 112 ¶ 2 (2006). See Ex Parte
Gee, No. 2012-001041, 2014 WL 1446589 (P.T.A.B. Apr.
11, 2014) (“Board Decision”), aff’d on reh’g, 2014 WL
3840551 (P.T.A.B. Aug. 1, 2014) (“Rehearing Decision”).
Because the Board did not err in concluding that the
claims of the ’404 application would have been obvious,
we affirm.
BACKGROUND
Gee owns the ’404 application, which is directed to a
method of treating a viral infection, such as one caused by
the Herpes Simplex Virus (“herpes”), with a mixture of
coffee grounds and honey. According to the application,
“[i]t is suspected that the combination of a bee product
and caffeine produces . . . a synergistic effect that inhibits
replication of the virus more so than would treatment
with either caffeine or bee product alone.” J.A. 32. Inde-
pendent claim 38, which is representative of the claims on
appeal, reads as follows:
38. A method for the treatment of a viral infection
comprising:
a) forming a mixture of coffee grounds and honey;
and
b) treating a virus that causes the viral infection
with said coffee grounds-honey mixture.
J.A. 309.
The PTO Examiner rejected claims 38, 39, and 41–43
under § 103(a) as unpatentable over U.S. Patent
5,382,436 (“Potts”) in view of: (1) Linda White & Steven
Foster, The Herbal Drugstore: The Best Natural Alterna-
tives to Over-the-Counter Prescription Medicines! (2000)
(“White”); (2) U.S. Patent 6,953,574 (“Sobol”); (3) U.S.
Patent 5,952,373 (“Lanzendörfer”); and (4) U.S. Patent
IN RE: GEE 3
Application 2003/0086986 (“Bruijn”). The Examiner also
rejected claims 38 and 41–43 under § 112 ¶ 2.
Gee appealed to the Board, which affirmed the Exam-
iner’s obviousness rejection of claims 38, 39, and 41–43
based on Potts in view of White, Sobol, Lanzendörfer, and
Bruijn. Board Decision at *4. The Board found that it
would have been obvious to combine coffee grounds and
honey, each known to treat herpes, to form a third compo-
sition also used for the treatment of herpes. Id. at *3.
The Board also affirmed the Examiner’s indefinite-
ness rejection of claims 38 and 41–43. Id. at *2. The
Board found the claimed “treating” step in claim 38 to be
ambiguous because of the difference between Gee’s inter-
pretation that one skilled in the art would inherently
know to apply the mixture topically and the Examiner’s
interpretation based on the specification that the claims
could include orally consuming the mixture. Id. The
Board concluded that any ambiguity should be removed
from claim 38 by clarifying that the treatment is intended
to be a topical application. Id.
Gee requested rehearing, but the Board “adhere[d] to
the original Decision affirming the Examiner’s rejections.”
Rehearing Decision at *1. In response to Gee’s argument
that the Board incorrectly applied an obvious-to-try
rationale in the obviousness rejection, the Board found
that Gee had presented insufficient evidence to establish
that the claimed combination of coffee grounds and honey
produced any unexpected results. Id. at *3. The Board
reasoned that the specification’s assertion of a possible
synergistic effect, without supporting evidence, failed to
overcome the prima facie case of obviousness. Id.
The Board also maintained the Examiner’s indefi-
niteness rejection, finding the claims to be vague as to the
scope of “treating.” Id. at *1. The Board reaffirmed the
ambiguity between topical and oral administration,
explaining that “the ambiguity is whether the virus itself
4 IN RE: GEE
is being treated, or whether it is the infection caused by
the virus (in the form of sores) that is being treated.” Id.
The Board concluded that “[w]hichever interpretation
[Gee] has settled on can be incorporated into the claim
language, thereby removing any ambiguity as to what is
required by ‘treating a virus.’” Id. at *2.
Gee timely appealed to this court. We have jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo,
In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938). Obviousness is a ques-
tion of law based on several underlying factual findings,
In re Baxter, 678 F.3d 1357, 1361 (Fed. Cir. 2012), includ-
ing what a reference teaches, Rapoport v. Dement, 254
F.3d 1053, 1060–61 (Fed. Cir. 2001).
Gee argues that the Board erred because, although
the prior art discloses the use of coffee grounds and honey
individually to treat a virus, none of the prior art discloses
the use of a combination of coffee grounds and honey to
treat a virus. Gee further contends that the Board’s sole
reason for combining coffee grounds and honey was that
both have been used in the past to treat viral infections;
Gee argues, however, that the Board’s reasoning is insuf-
ficient where, as here, the universe of possible combina-
tions is large and there is no indication in the prior art as
to which of the possible combinations are likely to be
successful.
The Director responds that substantial evidence sup-
ports the Board’s findings that it would have been obvious
IN RE: GEE 5
to combine coffee grounds and honey to treat a virus
based on the combined teachings of Potts, White, and
Sobol—which collectively teach the individual uses of
caffeine from coffee grounds and honey to treat viral
infections—and achieve the same result achieved by
either product alone. To the extent the Board applied an
obvious-to-try rationale, the Director argues that the
Board correctly found that Gee’s claimed invention would
have been obvious to try because the specification’s asser-
tion of a synergism for the combination of honey and
caffeine provided insufficient evidence of unexpected
results.
We agree with the Director that substantial evidence
supports the Board’s finding that claims 38, 39, and 41–43
would have been obvious based on Potts in view of White,
Sobol, Lanzendörfer, and Bruijn. “[W]hen a patent ‘simp-
ly arranges old elements with each performing the same
function it had been known to perform’ and yields no more
than one would expect from such an arrangement, the
combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976)). Gee does not dispute that the
prior art teaches the individual use of coffee grounds and
honey to treat viral infections. Indeed, as the Board
found: (1) Potts teaches the use of a beeswax-based formu-
lation with caffeine to prevent herpes cold sores, Board
Decision at *2; (2) White recommends the use of coffee
grounds to treat herpes-associated sores because the
caffeine in coffee inhibits herpes, id.; and (3) Sobol teaches
that compositions containing a variety of ingredients,
including honey, have a broad spectrum of therapeutic
activity, including activity against viruses such as herpes,
id. at *3.
It would thus have been obvious to combine coffee
grounds and honey, each of which is taught by the prior
art to be useful for treating viral infections, to create a
third composition which is also useful for treating viral
6 IN RE: GEE
infections. In re Kerkhoven, 626 F.2d 846, 850 (CCPA
1980) (citations omitted). The use of the combination of
coffee grounds and honey to treat viral infections is noth-
ing “more than the predictable use of prior art elements
according to their established functions.” KSR, 550 U.S.
at 417.
The Board also correctly relied on the obvious-to-try
rationale because Gee failed to provide evidence that the
combination of coffee grounds and honey in a single
composition yields a composition with unexpected results.
See In re Crockett, 279 F.2d 274, 276 (CCPA 1960) (The
“joint use [of magnesium oxide and calcium carbide] is not
patentable” where the prior art teaches “that both magne-
sium oxide and calcium carbide, individually, promote the
formation of a nodular structure in cast iron, and it would
be natural to suppose that, in combination, they would
produce the same effect and would supplement each
other.”). As Gee acknowledges, coffee grounds and honey
have each proven to be individually successful in treating
viral infections. The specification of the ’404 application
states that “[i]t is suspected that the combination of a bee
product and caffeine produces . . . a synergistic effect.”
J.A. 32. But unsupported statements in the specification
will not support a finding of unexpected results. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Gee has thus
failed to identify evidence showing that the combination
of coffee grounds and honey in a single composition pro-
vides unexpected results. As a result, we conclude that
the Board did not err in affirming the Examiner’s decision
that claims 38, 39, and 41–43 would have been obvious
over Potts in view of White, Sobol, Lanzendörfer, and
Bruijn.
Because we conclude that the Board did not err in af-
firming the Examiner’s conclusion that claims 38, 39, and
41–43 would have been obvious, we do not need to reach
the rejection of claims 38 and 41–43 under § 112 ¶ 2.
IN RE: GEE 7
CONCLUSION
We have considered the remaining arguments and
find them unpersuasive. For the foregoing reasons, we
conclude that claims 38, 39, and 41–43 of the ’404 applica-
tion would have been obvious in view of the prior art and
therefore affirm the decision of the Board.
AFFIRMED