Tuesday, June 09, 2015

CAFC affirms PTAB in In re Gee; KSR cited

The Gee case presented a claim to a combination of two elements to achieve
a result, when each element alone was known to obtain the result:

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.”


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.

The CAFC affirmed the PTAB in the case In re Gee:

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.

Determinations by PTAB are reviewed for "substantial evidence":

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).

The CAFC cited KSR:

“[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

The CAFC cited n re Kerkhoven, 626 F.2d 846, 850 (CCPA

"Obvious to try" was discussed:

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
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).

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/15-1145.Opinion.6-4-2015.1.PDF


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