Federal Circuit disposition — 20-1682

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: MARK GORRIS,
Appellant
______________________
2020-1682
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/639,882.
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Decided: March 11, 2021
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M ICHAEL J OHN H ICKEY, Lewis Rice LLC, St. Louis, MO,
for appellant. Also represented by M ICHAEL ARMSTRONG ,
K IRK D AMMAN .
K AKOLI C APRIHAN , Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Andrew Hirshfeld. Also represented by THOMAS W.
K RAUSE , FARHEENA Y ASMEEN R ASHEED , M OLLY R. SILFEN .
______________________
Before O’M ALLEY, M AYER , and TARANTO , Circuit Judges.
PER C URIAM.
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IN RE: GORRIS 2
Mark Gorris appeals a decision of the Patent Trial and
Appeal Board (“board”) affirming an examiner’s obvious-
ness rejections of proposed claims 21–38 of U.S. Patent Ap-
plication No. 12/639,882 (the “’882 application”). See Ex
parte Gorris, No. 2018-004209, 2020 WL 601688 (P.T.A.B.
Feb. 4, 2020) (“Board Decision”). For the reasons discussed
below, we affirm.
BACKGROUND
The ’882 application describes the formulation of a
“chewable consumable” that contains a “medicinal dose” of
cinnamon. J.A. 9; see also J.A. 22–23. The application ex-
plains that “[c]innamon is believed to act as an appetite
suppressant as well as providing other health benefits
when taken in a sufficient dose.” J.A. 17. It further states
that although cinnamon is used in a variety of foods, such
as cereals and cookies, “the inclusion of cinnamon in these
foods as a flavoring is in a relatively small dose.” J.A. 17–
18. Because the amount of cinnamon contained in a food
item is typically very small relative to the item’s total mass,
ingesting that food item generally “is insufficient to provide
for any meaningful benefit without undue consumption of
the food item.” J.A. 18.
The ’882 application explains that a “medicinal dose” of
cinnamon can be delivered by placing the cinnamon in a
“chewable consumable” and using an unrefined sweetener
to bind the chewable consumable’s ingredients together.
J.A. 9; see also J.A. 36–38. Independent claim 21 is repre-
sentative:
A chewable consumable comprising:
a medicinal dose of cinnamon, said medicinal
dose comprising at least 1 gram and at least 2.5%
of the total mass of said chewable consumable;
a fruit additive chosen from the group consist-
ing of: fruit extract, fruit rind and combinations
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IN RE: GORRIS 3
thereof, said fruit additive comprising at least 2.5%
of the total mass of said chewable consumable;
a grain; and
an unrefined sweetener;
wherein said chewable consumable is formed
by said unrefined sweetener binding said cinna-
mon, said fruit additive, and said grain together
without use of additional fat or chain proteins in
said binding;
wherein said chewable consumable comprises
between about 16 to about 35 grams.
J.A. 9.
The board affirmed the examiner’s rejection of claim 21
as obvious over U.S. Patent Application No. 2009/0004334
A1 (“Nair”), see J.A. 408–20, in combination with Lan Su et
al., Total Phenolic Contents, Chelating Capacities & Radi-
cal-Scavenging Properties of Black Peppercorn, Nutmeg,
Rosehip, Cinnamon & Oregano Leaf, 100 Food Chemistry
990–97 (2007) (“Su”), see J.A. 421–28, as well as a number
other references, see J.A. 429–513. The board explained
that because Gorris had only presented arguments ad-
dressing the examiner’s rejection of claim 21, the rejection
of the dependent claims would “stand[] or fall[] with the
rejection of claim 21.” Board Decision, 2020 WL 601688, at
*2.
Although Gorris contended that the cinnamon concen-
tration recited in proposed claim 21 “would be beyond that
which one skilled in the art would have considered in a nu-
tritional product,” the board rejected this argument. Id. In
the board’s view, because “Nair expressly identifies cinna-
mon as an ingredient intended to provide health benefits,”
a person “of ordinary skill in the art would have had a rea-
son to maximize the amount of cinnamon contained in the
[food] product.” Id. The board determined, moreover, that
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IN RE: GORRIS 4
Gorris had failed to establish that the cinnamon concentra-
tion level recited in his claims “would have exceeded that
which would have been considered with a reasonable ex-
pectation of success for the known purpose of providing
maximum health benefits.” Id.
Gorris then filed a timely appeal with this court. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35
U.S.C. § 141(a).
D ISCUSSION
This court reviews the board’s factual determinations
for substantial evidence and its legal determinations de
novo. See In re Van Os, 844 F.3d 1359, 1360 (Fed. Cir.
2017). Obviousness is a question of law based on underly-
ing factual findings. See Arctic Cat Inc. v. Bombardier Rec-
reational Prods. Inc., 876 F.3d 1350, 1358 (Fed. Cir. 2017).
Such factual findings include determinations as to: (1) the
scope and content of the prior art; and (2) whether a person
of ordinary skill in the art would have been motivated to
combine or modify prior art references with a reasonable
expectation of success. See Intelligent Bio-Sys., Inc. v. Illu-
mina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016);
Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359,
1364 (Fed. Cir. 2015).
On appeal, Gorris contends that both the board and the
examiner “ignored the fact that the cited prior art refer-
ences did not disclose, separately or in combination with
each other, the amount or percentage of cinnamon claimed
in [his] invention’s chewable consumable.” Brief of Appel-
lant 12. In support, he contends that although Nair, the
primary reference relied upon by the board and the exam-
iner, “teaches a concentration range of cinnamon for its
powdered supplement,” it “gives no indication whatsoever
regarding what the amount or percentage of cinnamon
would be in any chewable consumable created from Nair’s
powdered supplement.” Id. (emphases omitted). Addition-
ally, Gorris asserts that a person of ordinary skill in the art
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IN RE: GORRIS 5
would not have been motivated to “modify Nair in a way
that meets” the limitations of proposed claim 21. Id. (em-
phasis omitted).
Having reviewed the record, however, we see no legal
error in the board’s analysis and conclude that its factual
findings are supported by substantial evidence. Nair de-
scribes a nutritional powder which contains cinnamon and
which can be incorporated into a variety of chewable food
products. J.A. 411–18. Nair explains, moreover, that cin-
namon can have a wide range of medicinal benefits. J.A.
411. For example, cinnamon may “provide a natural rem-
edy against adult onset type II diabetes” and may assist in
“lowering ‘bad’ LDL cholesterol.” J.A. 411. Cinnamon may
also act as a “mild stimulant” and can exhibit “anti-blood
clotting action.” J.A. 411.*
Nair further teaches the formulation of a nutritional
powder containing cinnamon in an amount as high as
twenty percent, by weight, of the powder. J.A. 414. This
powder can be incorporated into food products such as
cookies and nutrient bars. J.A. 417–18. Other ingredients,
such as spices and honey, can be combined with the powder
to increase stability and to provide additional nutritional
benefits. J.A. 417–18.
Gorris does not meaningfully dispute that Nair teaches
the formulation of a nutritional powder with a cinnamon
concentration of between approximately 0.1% and approx-
imately 20% by weight, see J.A. 361–62, 414, or that this
cinnamon concentration range overlaps with the cinnamon
concentration recited in claim 21 of his application. He
* Su likewise teaches that cinnamon can confer sig-
nificant health benefits. See J.A. 422. It explains that in
addition to providing flavoring, cinnamon exhibits “antimi-
crobial activity” and can be used “for controlling glucose in-
tolerance and diabetes.” J.A. 422.
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IN RE: GORRIS 6
asserts, however, that the board erred in affirming the ex-
aminer’s obviousness rejections because Nair only de-
scribes the desired cinnamon concentration in a nutritional
powder that is subsequently used to make a chewable con-
sumable, rather than the cinnamon concentration in the
chewable consumable itself. See Brief of Appellant 17–20.
We disagree. Even assuming arguendo that Gorris’
reading of Nair is correct, substantial evidence supports
the board’s determination that a person of ordinary skill in
the art would have been motivated to formulate a chewable
food product with the claimed cinnamon concentration and
that he or she would have had a reasonable expectation of
success in doing so. See Board Decision, 2020 WL 601688,
at *2.
As to motivation, this court has explained that “[t]he
normal desire of artisans to improve upon what is already
generally known can provide the motivation to optimize
variables such as the percentage of a known [ingredient]
for use in a known” product. In re Ethicon, Inc., 844 F.3d
1344, 1351 (Fed. Cir. 2017); see also KSR Int’l Co. v. Tele-
flex Inc., 550 U.S. 398, 401 (2007) (emphasizing that “[i]f a
person of ordinary skill in the art can implement a predict-
able variation [of a known product], and would see the ben-
efit of doing so, § 103 likely bars its patentability”);
Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341–42
(Fed. Cir. 2020) (concluding that a skilled artisan would
have been motivated to optimize the temperature in a
claimed process and explaining that “given the ease with
which temperature can be varied, finding an optimal tem-
perature range would have been nothing more than routine
experimentation”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1368 (Fed. Cir. 2007) (emphasizing that “the discov-
ery of an optimum value of a variable in a known process
is usually obvious”). Given that both Nair and Su tout the
health benefits of cinnamon and that Nair specifically
teaches that a powder containing a concentration of cinna-
mon as high as twenty percent by weight can be
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IN RE: GORRIS 7
incorporated into various food products, J.A. 414, 417–18,
substantial evidence supports the board’s determination
that a person of ordinary skill in the art would have been
motivated to formulate a chewable food product containing
the cinnamon concentration recited in proposed claim 21.
See Board Decision, 2020 WL 601688, at *2 (concluding
that a skilled artisan, knowing of cinnamon’s health bene-
fits, would have been motivated to maximize the cinnamon
concentration in a food product); see also KSR, 550 U.S. at
418 (emphasizing that the obviousness inquiry must “take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ”).
The board likewise correctly determined that a person
of ordinary skill in the art would reasonably have expected
to succeed in formulating a “chewable consumable” product
that contained a “medicinal dose of cinnamon . . . compris-
ing at least 1 gram and at least 2.5% of the total mass of
said chewable consumable.” J.A. 9; see Board Decision,
2020 WL 601688, at *2. Although Gorris asserted before
the board that a person of ordinary skill in the art would
not have included the recited cinnamon concentration in a
chewable food product because of cinnamon’s strong flavor,
he failed to provide any persuasive evidence to support this
contention. See Board Decision, 2020 WL 601688, at *2
(stating that Gorris had “not provided evidence that the re-
cited concentration range would have exceeded that which
would have been considered with a reasonable expectation
of success for the known purpose of providing maximum
health benefits”); see also Pfizer, 480 F.3d at 1365 (explain-
ing that the prior art need only provide a reasonable expec-
tation of success and that “absolute predictability of
success is not required”).
In this regard, we note that Gorris points to no persua-
sive evidence indicating that a person of ordinary skill in
the art would have faced any significant difficulties in cre-
ating a chewable food product containing the cinnamon
concentration recited in proposed claim 21. Nor did Gorris
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IN RE: GORRIS 8
provide the board with any persuasive evidence that his re-
cited cinnamon concentration produces unexpected results.
See, e.g., In re Applied Materials, Inc., 692 F.3d 1289, 1297
(Fed. Cir. 2012) (concluding that the board correctly re-
jected claims as obvious where “there was no indication
that obtaining the claimed dimensions was beyond the ca-
pabilities of one of ordinary skill in the art or produced any
unexpectedly beneficial properties”). We have considered
Gorris’ remaining arguments but do not find them persua-
sive.
CONCLUSION
Accordingly, the decision of the Patent Trial and Ap-
peal Board is affirmed.
AFFIRMED
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