In honor of the holidays, we return to an innovation near and dear to any chocolate lover’s heart. The invention relates to a case we covered almost four years ago https://www.mriplaw.com/blog/0vnots3n6cfizyuoaeteychb506vfa
“Carl, the legendary drinking chocolate snowman from Kate Weiser Chocolate! Carl is made of a dark chocolate shell, and filled with hot cocoa and mini marshmallows. Melt him in a pot of milk of your choice, and enjoy the best cup of hot chocolate you've ever had. As featured in Oprah's Favorite Things 2018, this fun and delicious treat serves 6 cups.
The melting snowman in your hot chocolate was back at the PTAB with the same examiner as in the last appeal. This latest appeal was also reversed, with the case being a continuation of the application covered in the previous post. The present case Appeal 2023-003986, Application 17/544,417.
An issue in this appeal (after some rather doltish clarity rejections) was whether the prior art combination showed “a solid base to which the shell is attached by an edible bonding agent.” The examiner relied on a combination of a dessert cup and saucer made from chocolate rendered it obvious to put the snowman on such a base as a matter of design choice. According to the examiner:
Making the chocolate in various configuration [sic] would have been an obvious matter of choice. Chocolate is known to melt and cause binding. It would have been obvious to one skilled in the art to bind the shell to the base plate by using melted chocolate when desiring to obtain a secure adhesion to [sic] the chocolate configuration to the base plate. Such variation [sic] would have been obvious to one skilled in the art.
The PTAB disagreed:
These findings and the accompanying reasoning do not meet the Examiner’s burden of showing that the prior art describes or suggests the claimed food product comprising a beverage capsule and a solid base.
First, the Examiner has neither identified how or explained why a person having ordinary skill in the art would have understood the saucer in the Chocolate Cup reference to be solid.
Second, in rejecting claim 1, the Examiner repeatedly found that a person having ordinary skill in the art would have added a base to Fackrell’s beverage capsule to obtain a different product configuration, i.e., as a matter of design choice. This is not a sufficient explanation of why a person
having ordinary skill in the art would have combined the teachings of the prior art in the proposed manner to arrive at the claimed invention. To justify an obviousness rejection, the focus must be on what a person having ordinary skill in the art would have been motivated to do, rather than merely what such a person would have been able to do. Such an explanation is especially needed in a case such as this, where the danger of using an inappropriate degree of hindsight is particularly acute.We determine that the Examiner’s assertion that it would have been obvious to add a base to Fackrell’s beverage capsule as a matter of design choice is insufficient.
Another happy ending for the melting snowman.
Enjoy the holidays!