Patent application for food allergy tracking system rejected as obvious. IN RE: KAVANAGH

To get a patent on an invention in the United States, an inventor must file a patent application with the United States Patent and Trademark Office. For the patent application to be granted, the invention must meet all of the requirements of United States patent law. One of the requirements that an invention must meet to be granted a patent is that the invention cannot be obvious. This may seem like a simple requirement, but the term obvious has a special definition in patent law.

Obviousness under 35 U.S. Code § 103 is a question of law based on underlying findings of fact. Those underlying findings of fact include: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) the presence of evidence of secondary considerations, such “as commercial success, long felt but unsolved needs, failure of others,” and unexpected results.

Whether an invention is obvious is an objective test based on the prior art and a person having ordinary skill in that art. Prior art is the sum of all knowledge in a given field of technology. Research papers, granted patents, patent applications, and other forms of printed publications are all examples of prior art. The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention.

Whether or not an invention will be found obvious can be a complicated analysis therefore it is helpful to review case law to better understand how courts apply the obviousness standard.

IN RE: COLLEEN M. KAVANAGH, 2020-1931 (C.A.F.C. 2021) is an example of a case where an inventor could not overcome the determination that her invention was obvious.

This case begins with the filing of U.S. Patent Application No. 14/172,818, entitled “System and Method for Obtaining Batch Information about a Product” was filed. The invention was directed to “providing test results for major food allergens at the time of purchase and/or consumption” to “help consumers with food allergies and intolerances avoid negative health consequences from cross contact.” The ’818 application explains that food allergies are prevalent and potentially life-threatening, but efforts to minimize cross-contact of food products are voluntary and vary by company.

The patent examiner found that the application was obvious in view of three pieces of prior art. U.S. Patent Application No. 2015/0186966 (“Holman”), which teaches a method for preparing customized food products and packaging for consumers in order to meet their dietary needs and preferences. U.S. Patent Application No. 2013/0233919 (“van Waes”), which s discloses use of a data matrix code, such as a barcode, to track and trace food products. And, U.S. Patent Application No. 2008/0085343 (“Petty”), discloses preparing a low allergenic food bar and testing batches of the food bar during manufacture to ensure that it substantially excludes compounds derived from the “Big 8” allergens (dairy products, eggs, shellfish, soy, fish, peanuts, tree-nuts, and wheat).

The Patent Trial and Appeal Board affirmed the Examiner’s rejection. The PTAB explained that Holman discloses the majority of the claimed steps for manufacturing a safer food product, van Waes discloses obtaining and transmitting data about the food product, and Petty discloses testing the batch “for cross-contact, said testing occurring during or after manufacture.” The inventor then appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit affirmed the rejection. The PTAB made sufficient factual findings to support its obviousness conclusion, and those findings are supported by substantial evidence. The application merely rearranges old methods of food manufacturing, packaging, and testing. With respect to news articles submitted by the owner, intended to be evidence of non-obviousness, the Federal Circuit agreed with the PTAB that conclusory statements are not persuasive. The praise the invention received in the articles was not related to the features claimed in the application. For all these reasons the Federal Circuit affirmed the decision of the PTAB.

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