Issue 3                                                                                      May 2001

In this Issue

Welcome

Patent Strike ForceSM

You can patent THAT!?!.

Interesting Patent Case

Is a Peanut Butter and Jelly Sandwich Patentable?

IP Links

IP Glossary


Welcome

This is the third issue of Directions, a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. This month's issue addresses the feeling some people have that the patent office is out of control, patenting anything. Feel free to share this newsletter (see copyright notice below) and to provide feedback by e-mail to: bruceahz@techroadmap.com


Patent Strike ForceSM

You can patent THAT!?!

Several recent patents have raised eyebrows. These patents, on the face of it, appear to protect obvious, unoriginal, or mundane "inventions" and have left many people scratching their heads; is everything patentable? The issuance of these patents has raised questions about the competence of patent examiners and the rationality of the patent holders (who have invested dollars in what "must" be an unenforceable patent). One example that is making the rounds is US5,443,036 Method of exercising a cat. Although issued in 1995 it is just now becoming well known. No matter what you think of is validity (essentially teasing a cat with a laser pointer), it is a must read for the tongue in cheek specification language. For example, "Release of trigger 18 interrupts the power circuit and extinguishes the laser beam, whereupon the cat can return to more traditionally feline time passing until cat owner 12 re-initiates the laser cat exerciser." [emphasis added]

A more serious patent that has fallen into the "You can patent that!?!" category is US6,004,596 Sealed crustless sandwich. Issued in late 1999, this patent was a sleeper until the assignee, Smuckers' Menusaver division, moved against a local Michigan firm, Albie's Foods, whom it accused of infringing the '596 patent by manufacturing and selling a (gasp) peanut butter and jelly sandwich. Well, not really. And therein lies the real issue.

Although, as presented by the "lay" media, ("Have you ever made a peanut butter and jam sandwich without crusts? Well, then, you're in violation of US Patent #6,004,596 you evil-doer, you!") the patent seems unreasonable, the fact of the matter is that the patent covers a very specific manufactured food product that has real commercial value. It is not a patent that "keeps mom from making PB&J sandwiches for the kids", as has been suggested. Rather, it keeps Albie's Foods from, among other things, using the patented method of sealing the aforementioned PB&J to bid on and win government contracts such as the following, for school lunch food: 

Effective: 01/26/2001 Expires: 01/26/2002 Buyer: Richard Arnaz, 503-378-2816, richard.arnaz@state.or.us Authorized Agencies: See Item Description ALBIE'S FOODS INC. 1534 O'RURKE BLVD. GAYLORD MI 49735 888-824-0700 PROCESSING OF USDA COMMODITY FOODS Crustless peanut butter & jelly sandwich $0.28/EA Processing cost $0.28 Guaranteed minimum yield per 10k/lbs of product ************************************************** A.1 PURPOSE OF SOLICITATION: .... One Contract each will be awarded for the processing of: (1) string cheese, (2) peanut butter and grape jelly sandwiches, (3) breakfast portion smoked knockwurst, and (4) lunch portion smoked knockwurst. The initial term of the Contracts awarded will be for one (1) year, with an option to extend for up to four (4) additional one (1) year terms.

[...]

ITEM SPECIFICATIONS: D.3.1 Crustless Peanut Butter and Jelly Sandwich (a) Each portion shall be circular in shape, with crusts removed, frozen and individually wrapped. (b) Bread for sandwich shall be made from enriched bleached wheat flour. (c) Filling shall be peanut butter and grape jelly. (d) Each portion shall provide a minimum of one and one-fourth (1 1/4) servings of grain/bread and one (1) ounce of meat/meat alternate (National School Lunch Program guidelines). (e) Each portion will be individually sealed in food-grade packaging material. (f) Product must be bulk packed in a manner that prevents damage during transport. (g) Production code must be printed on master case and each individual portion. [Emphasis added]

Now I don't know about Mr. Arnaz, but if two competing bids were submitted to me, I'd go for the circular, crustless and sealed sandwich any day. And as we see below, the sealed aspect of the sandwich is a key ingredient in the granting of this patent.

Now this case is not decided, in fact it has hasn't even started, but the lessons I draw from it are: 

  • Don't believe everything you read in the press - Reading the first independent claim of a patent is not enough to know what is protected and what is not. The protected invention comprises each and every of the limitations described in the claims. While it may be fun to poke fun at a patent for PB&J, you need to be more sophisticated in your analysis than does the Boston Globe.

  • If an idea has commercial value, try to identify protectable aspects - the cost of a patent is small compared to almost any market. TechRoadmap and your Patent Attorney can help you understand what you can actually protect. If it will bring value to your company, go for it.

  • Do not talk yourself out of filing your patent - It's easy to start thinking like the media hype and believe that all patents these days are worthless junk. It's not true. Even if it were, better the patent be in your portfolio than not.

As an aside - I happen to believe this patent is likely to be held invalid. Not because it is protecting a PB&J sandwich but because I think there is uncited prior art that knocks the underpinnings from it. Patent US2463439, from March 1, 1949, teaches, you guessed it, a device for making sealed crustless sandwiches. 

Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc serves as an interface between companies and their legal counsel.

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Interesting Patent Case
Is a Peanut Butter and Jelly Sandwich Patentable?

 

The following request for re-examination was recently filed:

 

6,004,596, Reexam. S.N. 90/005,949, Mar. 9, 2001, Cl. 426/094, SEALED CRUSTLESS SANDWICH, Len C. Kertchman, et. al., Owner of Record: Menusaver, Inc., Orrville, OH, Attorney or Agent: Robert V. Vickers, Vickers Daniels and Young, Cleveland, OH, Ex. Gp.: 1761, Requester: Kevin J. Heinl, Brooks and Kushman, Southfield, MI

 

The patent in question can be viewed with Adobe Acrobat® at this link US6004596.PDF. As we have discussed above, the real issue is not about patenting a peanut butter and jelly sandwich but patenting a food product that has certain unique properties. My summary (below) of the '596 claims shows that Menusaver's food product is certainly not "Mom's PB&J" and, on giving it some thought, does not deserve to be in the "you can patent THAT!?!" category.

Menusaver has developed ("invented")...

 

       A sealed crustless sandwich made up of two bread layers with at least one filling where the edges of the bread have been crimped together and have had the crusts removed. But also, where you make the crimp seal add periodic, extra-deep dimples all around and you make sure to keep the filling away from the crimp. Actually you want to make this sandwich by first coating the inner sides of both pieces of  bread with a non-absorbing, sealing filling (like peanut butter) and then adding a layer any oozy filling (like jelly). Remember to keep the jelly away from the edges of the peanut butter. That way, when you close up the sandwich and crimp the edges, the two layers of peanut butter touch and the oozy stuff is encapsulated and never gets to the bread at all.

     If you do all these steps you will get a sandwich that will not get soggy for a long time. If you want to sell these sandwiches, get a license from us. On the other hand, if you want to leave out some steps it will not be our invention.

 

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Full text of copyrighted quotation

January 26, 2001
<URL: http://www.mlive.com/news/stories/20010119bpeanut.frm>
Have you ever made a peanut butter and jam sandwich without crusts? Well, then, you're in violation of US Patent #6,004,596 you evil-doer, you!

This innovative and unique patent can help you may your very own sandwich! Here's how: ``The sandwich includes a lower bread portion, an upper bread portion, an upper filling and a lower filling between the lower and upper bread portions, a center filling sealed between the upper and lower fillings and a crimped edge along an outer perimeter of the bread portions for sealing the fillings therebetween. The upper and lower fillings are preferably comprised of peanut butter and the center filling is comprised of at least jelly. The center filling is prevented from radiating outwardly and into and through the bread portions from the surrounding peanut butter.''

I tingle when confronted with such awe-inspring INNOVATION. Wow. Thank Christ for the patent system, or this innovation might NEVER have been passed on to the rest of humanity.

© Copyright 1999-2001 Mike Warren (mike-warren.com). This content may be reproduced verbatim in any medium provided this copyright notice and all content remains unchanged.

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IP Links
US Patent office Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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IP Glossary

Industry's Best Glossary

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Copyright © 2001 TechRoadmap Inc.  All rights reserved. This newsletter, or portions thereof, may be copied and distributed, so long as this is not done for profit, proper acknowledgement of the source is made, and this copyright notice is included. If you wish to be removed from this mailing list, please simply reply to this message with the word REMOVE in the subject line.