Patent on high fiber cookies rejected as obvious. IN RE: FULTON

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. The United States Patent and Trademark Office will review the patent application and determine whether the invention disclosed in the patent application meets all the requirements for a patent. If the United States Patent and Trademark Office determines that all the requirements are met the inventor will be granted a patent on the invention in the United States. A patent grants the patent owner the exclusive right to make, use, sell or import the invention in the United States.

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. 35 U.S.C. 103 of United States patent law outlines the definition of obviousness. 35 U.S.C. 103 states that a patent for a claimed invention may not be obtained … if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art (POSITA) to which the claimed invention pertains.

Obviousness is a question of law based on underlying findings of fact. An obviousness determination requires finding that a POSITA would have been motivated to combine or modify the teachings in the prior art and would have had a reasonable expectation of success in doing so. Whether a POSITA would have been motivated to modify or combine teachings in the prior art, and whether he would have had a reasonable expectation of success, are questions of fact. Exactly how obviousness is determined in the context of patents can be a difficult concept to understand therefore is it useful to review court opinions to understand the process.

IN RE: DAVID JOHN FULTON, 2020-1384 (C.A.F.C. 2020) is a case which illustrates when an invention will be considered obvious under 35 U.S.C. 103.

The invention in this case is intended to increase health by reducing glucose in baked goods. David Fulton filed U.S. Patent Application No. 12/789,280 which claims a method of making a low-carbohydrate baked food products using
egg-bound water and psyllium fiber instead of traditional flour. The ’280 application describes and claims methods for making low-starch, high-fiber baked food products using controlled wetting, or hydration, of mucilaginous hydrocolloids such as psyllium. The method predominantly uses liquids from eggs or other protein or fat source with a small amount of water because the psyllium will not stick together well if there is too much water in the mix.

The patent examiner assigned to the ‘280 application rejected it as obvious under 35 U.S.C. 103 in view of the combination of three prior-art references: Woestelandt, Zohoungbogbo, and Malby. Woestelandt is a European patent that discloses a gluten-free bakery product made with 30–70% by weight gluten-free wheat flour and 30–70% by weight eggs. Zohoungbogbo is a US patent that discloses a flour comprising at least 50% protein, less than 15% carbohydrates, and 35–50% plant fibers used to make pasta or similar products. Malby is a patent application that discloses a gluten-free bread made from eggs and gel-forming plant material such as psyllium fiber. Malby teaches that varying the solid-to liquid ratio of a mixture including psyllium affects the texture of the bread. The Patent Trial and Appeal Board affirmed the examiner’s rejection and Mr. Fulton appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit held that substantial evidence supported the Board’s decision. The prior art cited supports the determination that a skilled artisan would have found it obvious to substitute the wheat flour in Woestelandt with the plant-based flour in Zohoungbogbo in preparing a low-carbohydrate dietetic baked product. Neither Woestelandt nor Zohoungbogbo specifically discloses the use of psyllium as a plant fiber, however Malby discloses a gluten-free bread made with egg and psyllium fiber. Further, Malby’s disclosure of varying the solid-to liquid ratio of a mixture to get a desired texture demonstrates that the ratios described in the patent application would have been discovered with experimentation. Based on these findings the Federal Circuit affirmed the Board’s decision.

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