Digest of In re Gee, No. 2015-1145 (Fed. Cir. June 8, 2015) (non-precedential). On appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Before Lourie, Plager, and Dyk (per curiam).

Procedural Posture: Applicant appeals the Board’s decision rejecting claims in a pending application under 35 U.S.C. § 103(a) and 35 U.S.C. § 112 ¶ 2. The Federal Circuit affirmed the obviousness rejection.

  • Obviousness: Substantial evidence supports the Board’s finding that claims directed to a method of treating a viral infection with a mixture of coffee grounds and honey would have been obvious, where the prior art disclosed that coffee grounds and honey could each individually treat a viral infection. The use of the combination is therefore “nothing more than the predictable use of prior art elements according to their established functions.”
  • Obviousness: The Board concluded that the claimed invention would have been obvious-to-try because the applicant failed to provide evidence of unexpected results flowing from the combination of honey and caffeine. The Federal Circuit affirmed, stating that the bare statements in the specification about “a synergistic effect” of the combination “will not support a finding of unexpected results.”

Note: Special thanks to Na Kyung Lee, a 2015 Kenyon summer law clerk.