United States Court of Appeals 

for the Federal Circuit

______________________ 

SOFT GEL TECHNOLOGIES, INC.,

Appellant

v.

JARROW FORMULAS, INC.,

Appellee

______________________ 

2016-1814

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/002,396.

---------------------------------------------------------------------------

SOFT GEL TECHNOLOGIES, INC.,

Appellant

v.

JARROW FORMULAS, INC.,

Appellee

______________________ 

2016-1815

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/002,405.
2 SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 

---------------------------------------------------------------------------

SOFT GEL TECHNOLOGIES, INC.,

Appellant

v.

JARROW FORMULAS, INC.,

Appellee

______________________ 

2017-1051

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/002,411.

______________________ 

Decided: July 26, 2017 

______________________ 

 DEVAN V. PADMANABHAN, Winthrop & Weinstine, PA, 

Minneapolis, MN, argued for appellant. Also represented 

by SRI SANKARAN, ERIN DUNGAN, BRETT KLEIN. 

 MARK D. GIARRATANA, McCarter & English, LLP, 

Hartford, CT, argued for appellee. Also represented by 

ERIC E. GRONDAHL, CHARLES D. RAY. 

______________________ 

Before PROST, Chief Judge, BRYSON and HUGHES, Circuit Judges.

BRYSON, Circuit Judge.

Soft Gel Technologies, Inc., appeals from three inter 

partes reexamination decisions of the Patent Trial and 

Appeal Board. The Board’s decisions invalidated numer-
SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 3

ous claims in each of three related Soft Gel patents for 

obviousness. We affirm.

I 

A 

Soft Gel is the named assignee of U.S. Patent Nos. 

8,124,072 (“the ’072 patent”), 8,105,583 (“the ’583 patent”), and 8,147,826 (“the ’826 patent”). The ’583 patent 

issued from a continuation-in-part, and ’826 patent issued 

from a continuation, of the ’072 patent. The ’072 patent 

issued on February 28, 2012; the ’583 patent issued on 

January 31, 2012; and the ’826 patent issued on April 3, 

2012.

The specifications of the three patents describe a 

method for dissolving a substance commonly referred to 

as CoQ10 in solvents known as monoterpenes. ’072 

patent, col. 2, ll. 46-48.1 The patented inventions include 

a composition, a soft gelatin capsule, and a method of 

making such a soft gelatin capsule, each involving a 

solution of CoQ10 dissolved in a monoterpene. 

CoQ10, also known as ubiquinone, is a coenzyme, i.e., 

a chemical compound that is required for the biological 

activity of certain proteins. ’072 patent, col. 1, ll. 16-25. 

It “affects the function of almost all cells in the body, 

making it essential for the health of all human tissues 

and organs.” Id., col. 1, ll. 39-41.

CoQ10 is necessary for certain metabolic processes 

and for the production of cellular energy; it has a secondary role as an antioxidant. ’072 patent, col. 1, ll. 18-24, 

37-38. It is particularly important in “the cells that are 

the most metabolically active: heart, immune system, 

gingiva, and gastric mucosa.” Id., col. 1, ll. 22-24, 41-43. 

 

1 The ’826 and ’583 patents include the written description of the ’072 patent in its entirety. 
4 SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 

In clinical trials, CoQ10 has been shown to be effective in 

regulating blood pressure and cholesterol levels, improving cardiovascular health, and “thwarting various diseases such as certain types of cancers.” Id., col. 1, ll. 44-49; 

see also id., col. 7, ll. 11-21 (noting that CoQ10 has been 

used in the treatment of cardiovascular conditions, periodontal diseases, mitochondrial-related diseases and 

disorders, and neurological disorders). 

Although CoQ10 is synthesized by the body, the body 

may require more than it can synthesize or obtain 

through normal dietary intake. ’072 patent, col. 1, ll. 26-

28. Oral supplementation can compensate for a CoQ10

deficiency. Id., col. 1, ll. 29-31. 

Unfortunately, CoQ10 is “sparingly soluble in hydrophilic solvents such as water.” ’072 patent, col. 1, ll. 51-

52. According to the Soft Gel patents, at the time of the 

inventions most solvents that were used to administer

CoQ10 in liquid form could dissolve, at most, only about 5

to 10 percent of the CoQ10. Id., col. 1, ll. 64-67; id., col. 2, 

ll. 59-61. For that reason, CoQ10 was generally administered in solid form, such as in a tablet or powder. Id., col. 

1, ll. 52-53; id., col. 2, ll. 63-64. CoQ10 could also be 

administered as a suspension, in which the CoQ10 is

partially dissolved in a solvent. Id., col. 1, ll. 52-53; id., 

col. 3, ll. 21-23. But those delivery methods limited the

bioavailability of the CoQ10, as only a small fraction of 

the CoQ10 would enter the bloodstream. Id., col. 1, ll. 53-

55; id., col. 3, ll. 23-24. The Soft Gel patents state that 

there was “a need in the art for an improved methodology 

to deliver increased amount[s] of bioavailable CoQ-10 to 

an individual in need thereof.” Id., col. 1, ll. 56-58.

The patents describe the discovery of monoterpenes as 

a solvent for CoQ10. ’072 patent, col. 1, ll. 62-64; id., col. 

2, ll. 46-48; see also id., col. 3, ll. 24-26. Monoterpenes are 

a class of compounds that have a ten-carbon skeleton and 

consist of “two isoprene units connected in a head-to-end 
SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 5

manner.” Id., col. 3, ll. 31-34. “Suitable examples of 

monoterpenes include, but are not limited to, limonene, . . . carvone, . . . and derivatives thereof.” Id., col. 3, 

ll. 49-53; see also id., col. 3, ll. 59-63 (listing, “[i]n particular,” a number of “suitable limonene derivatives”). 

Unlike aqueous solvents, monoterpenes can dissolve 

significant amounts of CoQ10. “Generally, about 30 to 

about 45% of the CoQ-10 (by weight [relative to that of 

the monoterpene]) is solubilized [dissolved] in the monoterpene.” ’072 patent, col. 2, ll. 11-12; see also, e.g., id., 

col. 2, line 65, through col. 3, line 11 (noting that up to 

about 60% by weight of CoQ10 may be dissolved in monoterpene, and describing other “aspects” of the invention in 

which the weight of solubilized CoQ10 relative to monoterpene is “about 0.1 percent . . . to about 45 percent,” 

“about 5 to about 50 percent,” “about 15 to about 40 

percent,” and “about 20 to about 35 percent”). The solution of CoQ10 dissolved in monoterpene may then be 

formulated as a caplet or soft gelatin capsule containing 

the solution. Id., col. 3, line 64, through col. 4, line 1. 

Formulations of that solution of CoQ10 dissolved in a 

monoterpene “provid[e] increased bioavailability in delivery,” id., col. 1, ll. 10-12, because “the solvated [dissolved] 

coenzyme can more easily pass into cells[,] . . . delivering 

increased amounts of the coenzyme into an individual’s 

physiological makeup,” ’583 patent, col. 7, ll. 4-7.

The claims of the Soft Gel patents focus on solutions 

of CoQ10 and a monoterpene called limonene. Limonene 

is a compound that can have one of two different threedimensional physical structures, labeled d-limonene and 

l-limonene. The claims of the three Soft Gel patents were 

amended to cover only solutions of CoQ10 and d-limonene. 

Claim 1 of each patent is representative for purposes 

of the respective appeal. 
6 SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 

Claim 1 of the ’072 patent, as amended, recites as follows: 

1. A soft gelatin capsule, comprising coenzyme 

Q-10 solubilized in a sufficient quantity of dlimonene suitable to solubilize said coenzyme Q10 to form a solution, wherein the amount of coenzyme Q-10 in said solution is about 15 percent up 

to about 60 percent coenzyme Q-10 by weight, 

with the proviso that the coenzyme Q-10 solubilized in the d-limonene is not in an emulsion, suspension, or elixir.

Claim 1 of the ’583 patent, as amended, recites as 

follows: 

1. A solubilized coenzyme Q-10 composition comprising:

coenzyme Q-10;

a sufficient quantity of d-limonene suitable to solubilize said coenzyme Q-10 thereby providing 

a solution in which the coenzyme Q-10 remains solubilized, with the proviso that said 

solution is not part of an emulsion, suspension, or elixir.

Claim 1 of the ’826 patent, as amended, recites as 

follows: 

1. A method of preparing a soft gel capsule, comprising the steps of:

(a) mixing coenzyme Q-10 with a sufficient quantity of d-limonene suitable to dissolve said coenzyme Q-10 and form a solution, with the 

proviso that said solution is not part of an 

emulsion, suspension, or elixir; wherein the 

amount of coenzyme Q-10 in said solution is 

about 15% up to about 60% coenzyme Q-10 by 

weight;
SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 7

(b) mixing said solution with an acceptable carrier to form a composition, with the proviso that 

said composition is not an emulsion, suspension, or elixir; and

(c) encapsulating said composition in a soft gel 

capsule.

B 

Jarrow Formulas, Inc., requested inter partes reexaminations of the three Soft Gel patents on September 15, 

2012. The Board ordered reexaminations of all three 

patents on November 23, 2012. In each reexamination, 

the examiner rejected various claims of the patents.

On appeal, the Board considered five key references. 

The first, Patent Application Laid-Open Disclosure No. 

S57-42616 (“Motoyama”), was published on March 10, 

1982. The Motoyama reference claims an oral formulation containing CoQ10 dissolved in an oil. Motoyama at 1, 

11. The oil is defined as “an oil-fat, lipid, wax, refined oil, 

mineral oil, or mixture of such oils,” and includes “terpenes” among the examples of such oils. Id. at 1, 5. 

Motoyama describes the method of dissolving CoQ10 in

the oil and encapsulating that solution. Id. at 4-5.

Motoyama discloses that CoQ10 is “highly soluble” in 

a particular monoterpene known as carvone. Motoyama 

at 2; see also id. at 5 (“[C]arvone is a particularly preferred oil due to good solubility for [CoQ10] and the 

property of dissolving an equal weight of [CoQ10] at room 

temperature.”). One of the two forms of carvone, lcarvone, is found in spearmint oil and peppermint oil. Id.

at 2. Spearmint and peppermint oils are essential oils, 

i.e., oils derived from plants. Id. at 5.

Motoyama describes several examples in which

CoQ10 was dissolved in l-carvone, after which the formulation was placed in capsules. Motoyama at 5-7. The 

capsules were orally administered to beagle dogs, and the
8 SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 

resulting concentration of CoQ10 in the dogs’ blood was 

measured. Id. at 6. The observed effect of the CoQ10

formulation was the “high bioavailability [of CoQ10] and 

particularly good absorption in the digestive tract, and . . .

a large area under the curve (AUC) of concentration [of 

CoQ10] in the blood.” Id. at 2; see also id. at 6-7 (Tables 

1-2). 

The next two references have overlapping disclosures; 

the first is a patent, and the second is a dissertation on 

which that patent is based. The patent, U.S. Patent No. 

7,588,786 (“Khan ’786 patent”), was issued in September 

2009 to Khan and Nazzal. It claims priority to a provisional application filed in November 2001. The dissertation, authored by Nazzal, is dated August 2002 (“Nazzal”). 

Both references note the poor solubility of CoQ10 in 

aqueous solvents such as water, and both posit that 

solvents such as lipids or oils could be used instead. See 

Nazzal at x; Khan ’786 patent, col. 1, ll. 21-26. The idea 

was to make an oil mixture consisting of oil and CoQ10, 

and then introduce the oil mixture into the body, where it 

would encounter an aqueous environment. See Nazzal at 

17-19; Khan ’786 patent, col. 1, ll. 28-30. Although oil 

does not dissolve in water, Nazzal noted that substances 

known as emulsifiers could be included in the oil mixture. 

Nazzal at 19-22. The emulsifiers would allow the oil 

mixture to disperse in the body as small droplets of oil in 

the body’s aqueous fluids. Id.; see also Khan ’786 patent, 

col. 1, ll. 28-30. The dispersion of oil droplets in water is 

called an emulsion—or a micro- or nano-emulsion, depending on the size of the oil droplets in the water. See 

Nazzal at 16-17; Khan ’786 patent, col. 1, ll. 26-30. The

formulation of CoQ10, oil, and emulsifiers is referred to as 

a self-emulsifying drug delivery system (“SEDDS”), a selfmicroemulsifying drug delivery system (“SMEDDS”), or a 

self-nanoemulsifying drug delivery system (“SNEDDS”). 

The distinction among the three systems depends on the 

size of the oil droplets formed when the oil mixture is 
SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 9

introduced into water. Nazzal at 19; Khan ’786 patent, 

col. 1, ll. 26-30; id., col. 2, ll. 52-55. 

For the oil mixture, Nazzal and Khan tested CoQ10

with various essential (volatile) oils, including peppermint 

oil, spearmint oil, and lemon oil, as solvents. See Nazzal 

at 13-14, 115-18; Khan ’786 patent, col. 4, ll. 28-31 & Fig. 

4. The goal was to obtain an oil mixture in which the 

CoQ10 was completely melted at 37oC, the average human body temperature. Nazzal at 112; Khan ’786 patent, 

col. 6, line 65, through col. 7, line 2. That would avoid the 

problem of administering a capsule containing CoQ10 as a

suspension (a solid precipitate in the oil), which is not an 

effective delivery method. Nazzal at 112; see also Khan 

’786 patent, col. 1, ll. 59-62. Instead, after ingestion of the 

capsule and exposure to body temperatures, the CoQ10

would melt in the oil, facilitating absorption by the body. 

See Nazzal at 26, 112; Khan ’786 patent, col. 2, ll. 55-61. 

Pure CoQ10 has a melting temperature of 51oC, far 

above body temperature. Khan ’786 patent, col. 6, ll. 13-

15 & Fig. 1. But the Khan ’786 patent and Nazzal disclose that CoQ10 can be mixed with a sufficient amount of 

an essential oil to lower its melting temperature. See 

Nazzal at 116-18 (Figs. 4.9-11); Khan ’786 patent, col. 6, 

ll. 36-40 & Figs. 3-4. Khan and Nazzal further disclose

that when mixed with an essential oil, the CoQ10 would 

melt at a lower temperature even after adding an emulsifier to prepare the SNEDDS. See Nazzal at 121-23; Khan 

’786 patent, col. 7, ll. 48-51 & tbl.2. 

The Nazzal dissertation concludes with a list of six 

“[r]ecommendations for future studies.” Nazzal at 246. 

The second and third recommendations on the list are to 

study “[t]he exact nature of the interaction that exists 

between CoQ[10] and essential oils” in lowering the 

melting point of CoQ10, and to study the “[c]hemical 

components of essential oils such as limonene, menthone, 
10 SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 

and carvone . . . for their potency in” lowering the melting 

point of CoQ10. Id.

The fourth reference relied on by the Board was 

1 Giovanni Fenaroli, Fenaroli’s Handbook of Flavor 

Ingredients 389 (2d ed. 1975) (“Fenaroli”). That reference

notes that lemon essential oil has many different components, but “contains approximately 90% limonene (by 

weight).” 

The fifth reference cited by the Board is a monograph

published by the World Health Organization’s International Agency for Research on Cancer (“IARC”). 56 IARC, 

Some Naturally Occurring Substances: Food Items and 

Constituents, Heterocyclic Aromatic Amines and Mycotoxins (1993). The monograph states that limonene is “the 

most frequently occurring natural monoterpene.” Id. at 

135. The monograph further explains that limonene

occurs naturally in the d- and l- forms, and that “the d

form comprises 98-100% of the limonene in most citrus 

oils.” Id.

In each of the three decisions at issue in this case, the 

Board found that (1) Motoyama teaches dissolving CoQ10 

in carvone, a monoterpene found in spearmint oil and 

peppermint oil, and then encapsulating the solution; 

(2) the Khan ’786 patent and Nazzal teach the use of 

essential oils, including peppermint oil, spearmint oil, and 

lemon oil, in conjunction with CoQ10; and (3) IARC and 

Fenaroli teach that d-limonene (a monoterpene) is the 

main constituent of lemon oil.2 The Board determined 

 

2 In the decisions addressing the ’072 and ’583 patents, the Board found that d-limonene was “the main 

constituent” of lemon oil. In the decision on rehearing 

regarding the ’826 patent, the Board found that dlimonene was “one of the main constituents” of lemon oil. 

That discrepancy is not material to resolution of the 
SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 11

that the combination of those references suggests the 

invention claimed in the Soft Gel patents—i.e., using dlimonene, as Motoyama had used carvone, to dissolve 

CoQ10 for oral formulations. The Board also found that a 

person of skill in the art would have been motivated to 

combine those references and would have had a reasonable expectation of success in doing so. Ultimately, the 

Board invalidated, on obviousness grounds, claims 1-24 of 

the ’072 patent; claims 1-2, 4, 6-10, 12-13, and 15-17 of 

the ’583 patent; and claims 1-2, 5, 7, and 6-15 of the ’826 

patent.3

On appeal, Soft Gel challenges as erroneous the 

Board’s factual findings (1) that d-limonene is the main 

constituent of lemon oil, (2) that the Khan ’786 patent 

does not teach away from the claimed invention, and 

(3) that a person of ordinary skill would have had a reasonable expectation of success regarding the combination. 

II

The question whether a patent claim is invalid for obviousness under 35 U.S.C. § 103(a) requires consideration 

of the scope and content of the prior art, differences 

 

appeals, and Soft Gel does not argue that it is. Soft Gel 

contends that the Board’s factual findings that dlimonene is “the main constituent” of lemon oil and that it 

is “one of the main constituents” of lemon oil are both

erroneous. 

3 The Board also found the same sets of claims in

the ’072 patent and the ’583 patent invalid on other 

grounds, including anticipation and obviousness based on 

different references. Because we affirm the Board’s 

obviousness ruling based on Motoyama combined with the 

other four references, which the Board applied in all three 

decisions, we do not address the other grounds on which 

the Board upheld the examiner’s rejections.
12 SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 

between the prior art and the patent claim, the level of 

ordinary skill in the art, and any relevant secondary 

considerations. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 

398, 406 (2007). An obviousness determination also 

requires a person of skill in the art at the time of the 

invention to have had “an apparent reason to combine the 

known elements in the fashion claimed by the patent at 

issue,” id. at 418, and a “reasonable expectation of success” in doing so, Alza Corp. v. Mylan Labs., Inc., 464 F.3d 

1286, 1289 (Fed. Cir. 2006). 

1. Soft Gel first challenges the Board’s factual finding

that d-limonene is the main constituent of lemon oil. The 

Board relied on the IARC and Fenaroli references, which

together show that lemon oil consists of approximately 88 

to 90 percent d-limonene by weight. Those references 

support the Board’s finding that d-limonene is the main 

constituent of lemon oil.

Soft Gel points to another reference that tested the 

essential oil from a number of different lemon oil species 

and disclosed one sample in which the limonene content 

was only 38.1 percent. Lota et al., Volatile Components of 

Peel and Leaf Oils of Lemon and Lime Species, 50 J. 

Agric. & Food Chem. 796, 797 (2002). Despite that sample, the Lota reference supports the Board’s finding. Of

the 19 samples tested in Lota, the limonene content 

ranged from a minimum of 38.1 percent to a maximum of 

95.8 percent. Id. In 17 of the samples, limonene made up 

more than half of the sample. Id. In the remaining 

samples, including the one that Soft Gel highlights, the 

amount of limonene was still much greater than that of 

any other constituent in the sample. Id. (no other constituent made up more than 32 percent of any sample). 

Based on that evidence, Lota concluded that “[l]imonene 

was always the main constituent . . . of all oil[]” samples. 

Id. at 799. 
SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 13

According to the IARC reference, the limonene in 

lemon oil consists entirely, or almost entirely, of dlimonene. IARC at 135 (d-limonene constitutes 98-100% 

of the limonene in citrus oils). Therefore, Lota and the 

IARC reference support the Board’s finding that dlimonene is the main constituent in the lemon peel oil

tested in Lota. 

2. Soft Gel next argues that, for several reasons, the 

Khan ’786 patent teaches away from dissolving CoQ10 in 

lemon oil. The Board rejected that contention. We sustain the Board’s ruling.

First, Soft Gel contends that the Khan ’786 patent 

teaches that it is difficult to dissolve CoQ10 in lemon oil. 

But what the Khan ’786 patent states is that CoQ10 is 

difficult to dissolve in aqueous solvents, fixed (nonvolatile) 

oils, and triglycerides. Khan ’786 patent, col. 1, ll. 46-47, 

55-62; id., col. 6, ll. 57-60. Instead of suggesting the use of 

those types of solvents with CoQ10, the Khan ’786 patent 

teaches the use of an essential (volatile) oil, such as lemon 

oil, peppermint oil, or spearmint oil, as a solvent for 

CoQ10. Id., col. 5, ll. 60-61; id., col. 6, ll. 27-31; see also 

id., col. 6, ll. 43-45. The Khan ’786 patent merely notes 

the difficulty of dissolving CoQ10 in many solvents other 

than essential oils such as lemon oil.

Second, Soft Gel argues that the Khan ’786 patent 

discloses only the melting of CoQ10 to convert it from a 

solid to a liquid in the presence of an essential oil. Soft 

Gel argues that Khan does not disclose dissolving CoQ10

in the oil. That point of contention is immaterial. Regardless of whether the Khan ’786 patent is interpreted to 

disclose dissolving CoQ10 in an essential oil such as

lemon oil, the Khan ’786 patent does not teach away from 

the inventions. In fact, the Khan ’786 patent teaches the 

use of essential oils to make CoQ10 more available to the 

body, which is precisely what is claimed in Soft Gel’s 

patents. 
14 SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 

Third, Soft Gel attempts to draw a contrast between 

lemon oil, on the one hand, and peppermint oil and 

spearmint oil, on the other. Soft Gel points to an experiment in which the emulsifier Cremophor EL was added to 

the melted mixture of CoQ10 and an essential oil. Khan 

’786 patent, col. 6, ll. 43-50. Upon addition of the emulsifier, the CoQ10 would crystallize (solidify) because CoQ10 

is not particularly soluble in that emulsifier. Id., col. 6, ll. 

36-38. To determine what would happen to the mixture 

of CoQ10, the essential oil, and the emulsifier upon ingestion, the mixture was heated to 37oC (body temperature). 

Id., col. 6, ll. 52-54. At low concentrations of the emulsifier, the CoQ10 melted again, resulting in a liquid mixture. 

See id., col. 7, tbl.2. That occurred for all four tested 

essential oils. See id. But at higher emulsifier concentrations in the other oils (spearmint, peppermint, and anise), 

the CoQ10 remained in solid form, even after heating to 

37oC. See id. With lemon oil, the CoQ10 re-melted, even 

at high emulsifier concentrations. Id., col. 7, ll. 42-44 & 

tbl.2. Those results show that lemon oil provided the best 

performance among the essential oils, not that it behaved 

in an entirely different manner from the other oils. See

id., col. 7, ll. 48-49 (“The use of lemon oil appears reasonable and attractive.”). 

For those reasons, Soft Gel has failed to discredit the 

Board’s finding that the Khan ’786 patent does not teach 

away from the inventions of the Soft Gel patents. More 

importantly, Soft Gel’s focused attack on the Khan ’786 

patent does not undermine the Board’s decision, which is

based on a combination of references. See In re Merck & 

Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (in the context of 

teaching away, “[n]on-obviousness cannot be established 

by attacking references individually where the rejection is 

based upon the teachings of a combination of references”). 

Read together, the Khan ’786 patent and the Motoyama 

reference suggest using the monoterpenes in lemon oil, 
SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 15

peppermint oil, and spearmint oil in conjunction with 

CoQ10.

3. Soft Gel further contends that a person of ordinary 

skill in the art would not have had a reasonable expectation of success in combining the references to use dlimonene in Motoyama’s invention. Soft Gel points out 

that Motoyama, Nazzal, and the Khan ’786 patent do not 

expressly mention d-limonene. Based on that omission, 

Soft Gel argues that a person of skill in the art would not 

have expected d-limonene to function like the carvone 

disclosed in Motoyama. 

But Soft Gel ignores the finding that the main constituent of lemon oil, as used in Nazzal and the Khan ’786 

patent, is d-limonene, and the statement in Motoyama 

that the oil solvent that was the subject of Motoyama’s 

invention includes “terpenes” such as d-limonene. Motoyama at 5. Soft Gel also fails to account for the recommendations in the Nazzal reference. After describing the 

same formulation that is disclosed in the Khan ’786 

patent, Nazzal recommends further study of the “nature 

of the interaction that exists between CoQ[10] and essential oils” and, more specifically, the “[c]hemical components of essential oils, such as limonene, menthone, and 

carvone.” Nazzal at 246. As the Board noted, those 

recommendations for future research show that a person 

of skill in the art would have recognized—and at least one 

(Nazzal) did recognize—that the monoterpenes limonene 

and carvone are of interest in the essential oil-CoQ10 

mixtures. Upon reading about carvone’s role in dissolving 

CoQ10 in Motoyama, a skilled artisan would have been 

motivated to combine the two references. Because

(1) Nazzal suggests testing the interaction of carvone and 

CoQ10 as well as the interaction of limonene and CoQ10, 

and (2) Motoyama teaches that carvone successfully 

dissolves CoQ10, a person of skill would reasonably expect 

that limonene, like carvone, would successfully dissolve 

CoQ10. A person of skill also would likely expect d-
16 SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 

limonene to work, consistent with Nazzal’s recommendation to study limonene based on his testing of lemon oil, of 

which d-limonene is the main constituent. 

Soft Gel highlights a 2004 article co-authored by Dr. 

Khan, which evaluates the use of l- and d-limonene in 

SNEDDS. Anitha Palamakula et al., Preparation and In 

Vitro Characterization of Self-Nanoemulsified Drug 

Delivery Systems of Coenzyme Q10 Using Chiral Essential 

Oil Components, Pharm. Tech. 74 (Oct. 2004) (“Palamakula”). According to Soft Gel, the reason that Dr. Khan 

conducted that “follow[] up” research was because it must 

not have been obvious that the lemon oil results in his 

earlier experiments were attributable to d-limonene. 

Appeal No. 17-1051, Appellant’s Br. at 17-18. 

In making that argument, Soft Gel applies an incorrect legal standard for obviousness, requiring “absolute 

predictability” rather than “a reasonable expectation of 

success.” Noelle v. Lederman, 355 F.3d 1343, 1352 (Fed. 

Cir. 2004). It is true that the Khan ’786 patent discloses 

lemon oil, not d-limonene. But that does not mean that a 

person of skill would not expect d-limonene, the main 

constituent of lemon oil, to work. Dr. Khan may have had 

just that expectation in conducting his subsequent research, in which he investigated whether d-limonene was 

responsible for the lemon oil-CoQ10 results. As the Board 

correctly noted, “[s]imply because [Dr.] Khan . . . [later] 

undertook a study to evaluate limonenes in SNEDDS[] 

does not mean that it would not have been obvious [that 

limonenes] would have worked to some extent.” A supplemental study does not imply lack of awareness of the 

likely result; rather, studies are frequently conducted to 

confirm what is suspected to be true. An incentive to 

conduct a confirmatory study frequently exists even when

one has every reason to expect success. As it happens, Dr. 

Khan was successful; his “[r]esults indicated that CoQ[10] 

is fairly soluble in [the] monoterpene[] [d]-limonene.” 

Palamakula at 78.
SOFT GEL TECHNOLOGIES, INC. v. JARROW FORMULAS, INC. 17

* * * 

Separately, Soft Gel complains that the Board’s decision regarding the ’072 patent must be reversed because 

in that opinion the Board ignored the fact that the claims 

were amended to recite “d-limonene” instead of “limonene.” The Board’s error in that regard, however, had no 

material effect on its obviousness decision and was therefore harmless. The IARC and Fenaroli references make

clear that the main constituent in the lemon oil that was 

the subject of the Khan ’786 patent is d-limonene; therefore, combining the Khan ’786 patent with Motoyama 

suggests dissolving CoQ10 in d-limonene. 

AFFIRMED