Commercial Success for Start-up Commercial Products

My kids are well past playing with food and utensils, but I remember the constant clean-up of those times. We used to joke about lining the kitchen with plastic wrap.

Which brings us to the “pre-spoon” - something you use to train your children before they graduate to a real spoon. Numnum’s has a well-designed site selling their pre-spoon (https://numnumbaby.us/pages/pre-spoon-gootensils) using the slogan “When it’s too soon to spoon, it’s the perfect time for NumNum.”

What it was not the perfect time for was getting their patent through the USPTO without improper rejections. Appeal 2022-001343. Application 15/294,414.

Claim 1 is reproduced below. The Office rejected claim 1 based on a combination of three references.

1. A utensil comprising:
a rounded handle end; and
a food end consisting of an exterior edge and a non-concave surface having interior extending arms,
wherein the utensil is approximately four inches long,
wherein the food end is to enter into a person’s mouth, and
wherein the arms in combination with portions of the non-concave surface together define a food retaining edge, wherein the food retaining edge defines a hole.

The applicant here strategically prepared for the appeal by not only having various arguments against the combination, but also by including declaration evidence to support commercial success. As is often the case with “simple” mechanical inventions, the Office can successfully string together a combination and utilize various doctrines related to intended use and the like to reject the claims. However, examiners often discount evidence of commercial success as lacking the required ‘nexus’ (between the claimed invention and the commercial success). Here, Numnum’s declaration hit all the necessary points to tip the PTAB from sustaining to reversing the rejection.

Specifically, the applicant tried seven arguments against the combination, from hindsight to lacking an expectation of success and everything in between. The PTAB swatted each one by the wayside. But when the issue of secondary considerations came up, the PTAB found that the examiner erred.

Some relevant aspects of the declaration in this case (linked here) are how it shows that the commercial product embodies the claimed invention. Specifically, the declaration shows, with images of the commercial product, how the commercial products “are essentially the claimed invention.” Further, the declaration explained how the commercial products contain no additional unclaimed elements that contribute to the commercial success of the products, as supported by the pictorial comparison. The declaration went on to link the commercial success to the claimed features by showing the applicant was able to charge nearly double the price of most typical early utensils and that there was no impact from sales/marketing, while also including customer reviews praising function according to the claimed structure (e.g., retaining yogurt). Finally, the declaration laid out sales data and linking that growth to the product by explaining that there could have been more but for production limitations.

This case represents a good example of how to establish commercial success for applicants developing new products in a small business where patent protection can be critical. Just because you cannot successfully spoon feed your commercial success evidence to the examiner does not mean you do not have potential to convince the PTAB. But, there are many pitfalls to relying on commercial success so be careful with the declaration and supporting evidence to avoid leaving a gap that allows the PTAB to affirm.

When Prior Art Discloses Extra Features

Understanding how to distinguish the prior art is a fundamental aspect of practicing patent law. One common area that trips up even experienced practitioners is the distinction between the prior art missing a feature of the invention, and the prior art having an additional feature compared to the invention. When put this way, the distinction is clear and as everyone knows - the former is an argument in favor of patentability whereas the latter is not. Yet, the distinctions between these two can blur substantially and cause hiccups in drafting and prosecution.

Today we review a medical algorithm invention (Appeal 2021-004018, Application 14/496,025) related to work being conducted by the University of South Carolina. The specific area of the invention is ultrasonography training. Claim 1 on appeal is below:

1. A method for conducting ultrasonography training using ultrasound loop control, the method comprising:
providing for display, with a computing device, a moving ultrasound image of an internal body part within a user interface as part of an ultrasound training exercise, the moving ultrasound image associated with an image frame loop including a plurality of individual image frames, the user interface including a first interface element associated with stopping the moving ultrasound image, a second interface element associated with cycling the image frame loop forward or backwards, and a third interface element associated with selecting an image frame of the plurality of individual image frames;
receiving, with the computing device, an initial user input via user interaction with the first interface element that is associated with stopping the moving ultrasound image at a current image frame of the image frame loop;
receiving, with the computing device, a second user input via user interaction with the second interface element associated with cycling forward or backwards through the image frame loop in order to provide additional image frames of the image frame loop for display to the user;
receiving, with the computing device, a third user input via user interaction with the third interface element that is associated with a submission of one of the plurality of individual image frames as a user-selected image frame for performing a given examination task;
in response to receipt of the third user input, accessing, with the computing device, assessment data associated with a pre-defined correct image frame for performing the given task during the ultrasonography training; and determining, with the computing device, whether the user-selected image frame corresponds to the pre-defined correct image frame based on the assessment data.

The examiner applied a combination of prior art. One of the applicant’s primary arguments was that the prior art taught identifying, from a plurality of image frames, an image frame that depicts a particular pathology and that selection of an image frame that depicts a particular pathology is not what is required in the claim. However whether the prior art performed some additional step (depicting a particular pathology) does not take away from the fact that the prior art taught selecting an image from a plurality of frames.

As succinctly explained by the Examiner, “[t]he pathology depicted on the image does not negate the teaching of Pedersen as applied to the claimed limitation,” because the user in Pedersen “is still selecting an image frame (from the plurality of image frames) regardless of whether the user selected the image frame due to the pathology it is depicting.”

A drafting tip: When there is potential for broad claim interpretations to lead to the idea that the invention enables simplified operation or skipping certain steps, it can be beneficial to lay out such details explicitly as at least an example embodiment. Since it can be difficult to avoid reading on the prior art when the only difference is that the prior art has extra features, potential amendments that exclude the extra feature are an option to consider.