A specification’s assertion of a possible synergistic effect, without supporting evidence, is insufficient to support a finding of unexpected results and overcome a prima facie case of obviousness. Here, for example, the specification’s assertion that “[i]t is suspected that the combination of a bee product and caffeine produces … a synergistic effect” in the treatment of a virus was found to be mere conjecture rather than evidence of unexpected results. “[U]nsupported statements in the specification will not support a finding of unexpected results.” It may therefore be best to include hard evidence such as clinical trials in an application predicated on a synergistic effect between two individually known components.
Background / Facts: The application on appeal here from rejection at the PTO is directed to treating a viral infection, such as one caused by the Herpes Simplex Virus (“herpes”), with a mixture of coffee grounds and honey. Although the prior art discloses the use of coffee grounds and honey individually to treat a virus, none of the prior art references discloses the use of a combination of coffee grounds and honey to treat a virus. Nevertheless, the PTO found that such a combination would have been obvious to try.
Issue(s): Whether the specification’s assertion of a possible synergistic effect in the claimed combination is sufficient to overcome the prima facie case of obviousness.
Holding(s): No. “As [the applicant] acknowledges, coffee grounds and honey have each proven to be individually successful in treating viral infections. The specification of the [] application states that ‘[i]t is suspected that the combination of a bee product and caffeine produces … a synergistic effect.’ [] But unsupported statements in the specification will not support a finding of unexpected results. [] [The applicant] has thus failed to identify evidence showing that the combination of coffee grounds and honey in a single composition provides unexpected results.”