Ex Parte Gee

Patent Trial and Appeal Board

Apr 11, 2014

10602404 (P.T.A.B. Apr. 11, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/602,404 06/23/2003 Gilbert C. Gee 5157-001 1676
24112 7590 04/11/2014
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
WARE, DEBORAH K
ART UNIT PAPER NUMBER
1651
MAIL DATE DELIVERY MODE
04/11/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GILBERT C. GEE
____________

Appeal 2012-001041
Application1 10/602,404
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC GRIMES, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of treating a viral infection using a mixture of coffee grounds and honey.
The Examiner has rejected the claims as being indefinite and as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellant identifies Gilbert C. Gee as the Real Party in Interest (App.
Br. 2).
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Application 10/602,404

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STATEMENT OF THE CASE
Claims 38, 39, and 41-43 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief. Claim 38 is representative of the
claims on appeal, and 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.
The following grounds of rejection are before us for review:
The Examiner has rejected claims 38 and 41-43 under 35 U.S.C.
§ 112, second paragraph for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
The Examiner has rejected claims 38, 39, and 41-43 under 35 U.S.C.
§ 103(a) as unpatentable over Potts2 in view of White,3 Sobol,4 Lazendörfer,5
and Bruijn.6

The Issue: Rejection under 35 U.S.C. § 112, second paragraph
The Examiner takes the position that the meaning of “treating a virus”
is unclear in light of the Specification. “Although the application for
treating is further described in claim 39 the term ‘treating’ as recited in step
b) of claim 38 renders the claim indefinite because it is not clear how the

2 Michael Potts, US 5,382,436, issued Jan. 17, 1995.
3 Linda White, M.D., & Steven Foster, The Herbal Drugstore: The Best
Natural Alternatives to Over-The-Counter and Prescription Medicines!,
171-172, Rodale (1998).
4 Constantin Vladimirovich Sobol et al., US 6,953,574 B2, issued Oct. 11,
2005.
5 Ghita Lanzendörfer et al., US 5,952,373, issued Sept. 14, 1999.
6 Chris De Bruijn et al., US 2003/0086986 A1, published May 8, 2003.
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3
step is intended to be carried out” (Ans. 6). Furthermore, the claim can be
interpreted to include “orally administering the coffee grounds-honey
mixture because drinking a coffee and honey mixture is disclosed [in the
Specification]. There is no disclosure that this treating step using coffee
grounds and honey mixture in the form of a drink or beverage will treat the
sores on skin, however” (id. at 11).
Appellant contends that the claims are directed to “a method of
treating a viral infection utilizing a very specific mixture comprised of very
specific ingredients. . . . The specification further provides how one skilled
in the art could treat the viral infection using the resultant mixture” (App.
Br. 5-6). “Further, in ‘treating’ the viral infection, those of ordinary skill in
the art would appreciate that claim 38 inherently requires the resultant
mixture to be topically applied. Although the specification provides
embodiments that describe both topical and liquid applications (e.g., coffee
and honey for drinking), one skilled in the art would not confuse the two
given that claim 38 recites coffee grounds as part of the mixture” (id. at 6-7).
We agree with the Examiner that “claim 38 does not require the
mixture in the form of a salve and more importantly does not define
‘treating’ by applying said coffee grounds-honey mixture topically to sores”
(Ans. 12). The difference between the Examiner’s Specification-based
interpretation that the claims could include drinking or otherwise consuming
the mixture and Appellant’s interpretation that one skilled in the art would
inherently know not to drink or consume a mixture of coffee grounds and
honey confirms that there is ambiguity in what is encompassed in part b) of
the claim. “[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
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and clarification imposed.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
We are not persuaded by Appellant’s position that it would be
inherent to only apply the mixture topically. We agree with the Examiner
that any ambiguity of how the treatment with the mixture is to be
implemented should be removed from claim 38 by clarifying that the
treatment is intended to be applied topically. Claims 41-43 have not been
argued separately; therefore, they fall with claim 38. 37 C.F.R.
§ 41.37(c)(1).

The Issue: Rejection for Obviousness
The Examiner takes the position that “[i]t would have been obvious to
one of ordinary skill in the art at the time the claimed invention was made to
provide for the coffee grounds and bee product (e.g. honey) mixture for
treating herpes virus as taught by Potts by replacing the caffeine and bee
product of Potts with honey and coffee [grounds]” (Ans. 8).
Does the preponderance of evidence of record support the Examiner’s
position that the combination of references renders claim 38 obvious?

Findings of Fact
1. Potts disclosed a lipsalve containing 10 % beeswax and 5%
micronized caffeine (Potts col. 5, ll. 20-40; see also Ans. 7).
2. Potts disclosed that the wax formulations containing 5 and 10%
caffeine have been used preventatively by herpes labialis (cold-sore)
sufferers (Potts col. 6, ll. 34-36; see also Ans. 15).
3. White disclosed
The caffeine in coffee and tea inhibits the herpes simplex virus.
In a study, a topical caffeine gel (Cafon) reduced the
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development of cold sore lesions. If you feel a lesion coming
on, one of the fastest first-aid tools just might be a wet tea bag
or some used coffee grounds.
(White 172 (emphasis added).)
4. The Examiner finds that Sobol teaches a “composition for
improving skin condition and having a broad spectrum of therapeutic
activity, such as an anti-viral. . . . Furthermore, the composition contains
many ingredients, including effective amounts of bee product, which
includes bee pollen, royal jelly, propolis, [and] honey.” (Ans. 7; see also
Sobol col. 8, ll. 47-49.)
5. Sobol disclosed using the medium for “the external
transcutaneous application as a bandage soaked in the medium placed over
the skin above effected organs or coating the body (rubbing it into the
skin).” (Sobol col. 9, ll. 47-50; see also Ans. 7.)
6. Sobol disclosed that “[t]he hydrolyzed fermented medium of
the invention is effective in treating a variety of infectious viral diseases
including . . . herpes of various types.” (Sobol col. 10, ll. 20-24; see also
Ans. 7.)

Principle of Law
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. . . . [T]he idea of combining
them flows logically from their having been individually taught
in the prior art.
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).

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Analysis
The Examiner takes the position that
coffee and honey are capable of forming a synergistic
combination when mixed together for treating microbial
disorders. To topically apply the mixture to herpes sores on the
skin is clearly suggested by the cited prior art. White et al
clearly teach herpes virus is treatable using the coffee grounds
themselves. Herpes simplex virus is a virus which causes the
herpes sores on the skin and is clearly taught, or at least
suggested, by the cited prior art.
(Ans. 9.)
Appellant contends that
the references teach the use of only one of the substances for
treating herpes (i.e., coffee or honey), none teach or suggest the
use of both substances (i.e., coffee or honey) in forming a
mixture to treat herpes. In fact, there is only one reference that
teaches the use of coffee grounds at all in the treatment of
herpes – White.
(App. Br. 8).
We agree with the Examiner’s finding, and Appellant does not
contest, that the references individually teach using either caffeine, coffee-
grounds or honey in the treatment of herpes (FFs 1-6). We agree with the
Examiner’s conclusion that it is prima facie obvious to combine two
compositions each being useful for the treatment of herpes in order to form a
third composition also used in the treatment of herpes (Ans. 14). See In re
Kerkhoven, 626 F.2d at 850.
As Appellant has not met the burden of showing that the Examiner
erred in rejecting claim 38, we affirm the rejection of claim 38 under 35
U.S.C. § 103(a) as being obvious. Because Appellant does not argue the
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claims separately, we focus our analysis on claim 38, and claims 39 and
41-43 fall with that claim (App. Br. 9). 37 C.F.R. § 41.37 (c)(1).

SUMMARY
We affirm the rejection of claims 38 and 41-43 under 35 U.S.C. § 112
second paragraph for failing to particularly point out and distinctly claim the
subject matter which Applicant regards as the invention.
We affirm the rejection of claims 38, 39, and 41-43 under 35 U.S.C.
§ 103(a) as unpatentable over Potts in view of White, Sobol, Lazendörfer,
and Bruijn.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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