Every practitioner working with individual inventors knows the feeling - the client has a truly clever invention, they are trying to build a business with their invention, and they did the right thing by performing a competent search and filing a well-drafted and complete patent application before any public disclosure, use, or sale, but … the examiner is intent on rejecting the application no matter what.

In honor of the holidays and the need for a feel-good result, today we review US Application SN 15/050,079, assigned to examiner Lien Tran in Art Unit 1793. You can look up examiner Tran’s statistics, but safe to say that this examiner is on the end of the bell curve.

To make this case especially difficult, it in the food arts. Practicing in the food arts is one of fascinating, and further it can be especially challenging due to some particular USPTO nuances particular to that art. We’ll get to those in a minute, but let’s first have some Holiday fun.

The invention is “Carl the Snowman” (link here) - described on the inventor’s website as her “magical brainchild [that] will bring you and your family special Holiday memories this year. Why Carl? Carl stands for C.hocolate A.nd R.eal L.ove and that's exactly what he's made out of.”

Carl the Snowman is a dark chocolate hollow figure filled with hot cocoa mix and mini marshmallows. Heat up a pot of milk, place Carl in the pot and watch him slowly melt in hot cocoa for the entire family!

Of course, by the time I found them, they were sold out for 2020. I’m making myself a note right now for 2021.

Carl the Snowman is an ingenious product in the area of shells that are dissolved or melted to release ingredients and form heated beverages. The specification explains that in a particular example, “multiple shells could be formed from chocolate and can contain ingredients for hot cocoa (such as cocoa mix and marshmallows). The multiple shells could be arranged in a particular pattern and decorated to form a character, such as a snowman.” Claim 1 on appeal is listed below:

1. A food product comprising:
first and second shells that contain one or more ingredientscwithin the shells and that are attached to each other by a first edible bonding agent separate from the shells; and
a base to which the first shell is attached by a second edible bonding agent separate from the shells and the base such that the first shell is secured to the base;
wherein the shells are configured to be dissolved or melted into a heated liquid to release the one or more ingredients and the base and the edible bonding agents are configured to be dissolved or melted into the heated liquid in order to form a heated beverage, and
wherein the first shell contains a first ingredient that dissolves to form the heated beverage and the second shell contains a second ingredient that does not dissolve.

Coming back to patent law, there are some issues as to patentability in the food arts that some might find unexpected. First, there is the issue of the order of mixing ingredients. Sometimes the difference between a recipe that works and one that doesn’t is in the order, but at the USPTO inventions as to the order of mixing have an uphill battle. From MPEP 2144.04, IV C, the selection of any order of mixing ingredients is prima facie obvious. Second, even when the court finds a recipe is patentable, USPTO examiners like to use language in the decision more to reject such inventions than accept them. Specifically, in In re Levin, 178 F.2d 945 (CCPA 1949), the court explained that “… new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.”

The examiner for Carl the Snowman knows those cases well and cites them often, and particularly cited Levin in combining seven references to reject the application. So the case was headed to appeal before it began, and hats off to the practitioner and inventor for sticking to their guns.

The PTAB decision provides a reasoned analysis as to many of the points raised by the applicant, but in the end touches on Levin:

The Examiner cites In re Levin, 178 F.2d 945 (CCPA 1949), for the proposition that “new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention.” However, as Appellant has pointed out, “In re Levin deals with the general unpatentability of food recipes, which the Appellant is not claiming in Claim 1. Rather, Claim 1 is clearly directed to a specific structure that includes various elements arranged and connected as recited in Claim 1.”

The invention claimed in In re Levin involved a “butter substitute food product.” The patentability of the instant claims, by contrast, does not turn on whether the composition of its components is new and nonobvious, but on whether those components are combined in a manner that would have been obvious based on the prior art. Thus, In re Levin does not support the Examiner’s rejection, and for the reasons discussed above, we conclude that the Examiner has not set out a prima facie case that the invention defined by the claims on appeal would have been obvious based on the cited references. We therefore reverse the rejection of claims 1–7, 9–16, and 18–23 under 35 U.S.C. § 103 based on the
cited references.

With all rejections reversed, we hope that Carl the Snowman obtains the protection it appears to deserve based on the PTAB’s decision.

So, in summary, do not let examiners, particularly those in the food arts, use Levin to go beyond its holding.

Happy Holidays and enjoy some Hot Cocoa when finishing off 2020.

P.S. - here is a nice video of the process: https://www.youtube.com/watch?v=WBYV0UWTjU0