By Audrey Millemann

#160 #160#160 #160#160 #160#160 #160The “peanut butter and jelly sandwich patent” has been a hot topic lately, from television news broadcasters to intellectual property commentators.#160 The triggering event was a Wall Street Journal article on April 5, 2005 concerning a hearing to be held that day by the Federal Circuit Court of Appeals.#160 The case was an appeal by the J. M. Smucker Company of an earlier decision by the Board of Patent Appeals and Interferences.#160 The Board had upheld the Patent and Trademark Office examiner’s rejection on obviousness grounds of two patent applications filed by Smucker’s for its crustless peanut butter and jelly sandwich (sold as the “Uncrustable”), a product that apparently generated $27.5 million in sales in 2004.

#160 #160#160 #160#160 #160#160 #160One of the claims at issue in these applications states:

#160 #160#160 #160#160 #160#160 #160″A method of creating a hermetically sealed crustless sandwich, said method comprising:

#160 #160#160 #160#160 #160#160 #160(a)#160 #160#160 #160#160 providing a first slices of bread with an edge crust;

#160 #160#160 #160#160 #160#160 #160(b)#160 #160#160 #160#160 applying a layer of peanut butter onto said first slice in an area inside said crust and defining a substance free outer periphery of said first slice;

#160 #160#160 #160#160 #160#160 #160(c)#160 #160#160 #160#160 applying a layer of fruit spread over said peanut butter layer leaving a perimeter of uncovered peanut butter;

#160 #160#160 #160#160 #160#160 #160(d)#160 #160#160 #160#160 covering said layer of fruit spread by a second layer of peanut butter contacting said first layer of peanut butter to encapsulate said fruit spread;

#160 #160#160 #160#160 #160#160 #160(e)#160 #160#160 #160#160 applying a second slice of bread over said first slice of bread with an edge crust matching said the edge crust of said first slice;

#160 #160#160 #160#160 #160#160 #160(f)#160 #160#160 #160#160 #160providing a cutter with a continuous cutting edge having a desired cut shape larger than said periphery;

#160 #160#160 #160#160 #160#160 #160(g)#160 #160#160 #160#160 positively forcing said cutting edge through said slices in unison with said cut shape outside said area to cut two matching cut portions of bread with an outer periphery outside side area and a contour matching said cut shape and surrounding said area;

#160 #160#160 #160#160 #160#160 #160(h)#160 #160#160 #160#160 compressing said bread completely around said outer periphery to seal said bread around said contour with said peanut butter and encapsulated first spread captured between said bread portions, wherein said compressing operation also crimps said substance free periphery at spaced pressure points to give space locations of greater sealing force at said outer periphery of said bread portions; and,

#160 #160#160 #160#160 #160#160 #160(i)#160 #160#160 #160#160 #160placing said crustless sandwich into an airtight package for long term storage.”

#160 #160#160 #160#160 #160#160 #160The key issue before the Board was whether Smucker’s method of crimping the edge of the Uncrustable sandwich was unique.#160 The Board had adopted the examiner’s reasoning, finding that Smucker’s claims were obvious based on existing methods used to make ravioli and pie crust.#160 The Board cited prior art including an international tart cookbook and related device and a newspaper article telling parents how to make peanut butter and jelly sandwiches that didn’t get soggy in school children’s lunch boxes.#160 The Board was not persuaded by the commercial success of the Uncrustable product, stating that there was no “nexus between the claimed invention and the evidence of commercial success.”#160 The Board affirmed the examiner’s rejection.#160 2003 WL 23507730 (Dec. 10, 2003).

#160 #160#160 #160#160 #160#160 #160On appeal to the Federal Circuit, Smucker’s argued that the prior art disclosed a “smashed edge,” not a “surface-to-surface-seal” as was used in Smucker’s method.#160 According to Smucker’s, the prior art was “the antithesis” of Smucker’s method; Smucker’s method preserved the integrity of the two separate slices of bread at the edge while the prior art method crushed the edge into one mass.#160

#160 #160#160 #160#160 #160#160 #160Things did not go well for Smucker’s at the Court of Appeals hearing.#160 One judge stated that he and his wife had used a crimping method when making peanut butter and jelly sandwiches for their child (presumably many years before Smucker’s patent application was filed).#160 Two days later, on April 8, 2005, the Court of Appeals affirmed the Board’s decision without an opinion.#160 In re Kretchman, Case No. 04-144849 (Fed. Cir. April 8, 2005).#160

#160 #160#160 #160#160 #160#160 #160This is not the first venture of Smucker’s into the world of patenting peanut butter and jelly sandwiches.#160 The original Uncrustable product was developed in 1995 by two dads in the Midwest who filed a patent application in 1997 and were selling the sandwiches to schools.#160 Smucker’s bought the dads’ business, and on December 21, 1999, the patent issued as United States patent no. 6,004,596.#160 The two patent applications before the Federal Circuit were continuations of continuations of the ‘596 patent.

#160 #160#160 #160#160 #160#160 #160Smucker’s takes the peanut butter and jelly sandwich business very seriously.#160 In 2001, it filed a patent infringement suit against a Michigan grocery/catering business, Albie’s Foods, alleging that Albie’s crustless peanut butter and jelly sandwiches infringed the ‘596 patent.#160 That case was eventually dismissed, but the ‘596 patent is now under reexamination.#160

#160 #160#160 #160#160 #160#160 #160As happened a few years back with Amazon.com’s “one-click” business#160 method patent, Smucker’s peanut butter and jelly sandwich patent has caused a flurry of criticism of the United States patent system and (yet another) demand for patent reform.#160 These critics argue that the patent system must be broken because it resulted in the ‘596 patent being allowed.#160 They believe that it is too easy to get a patent allowed and too difficult to invalidate a patent, all of which stifles competition.#160 They also feel that the costs of obtaining a patent and enforcing it in litigation (or defending against a bogus patent infringement claim) are too high.#160

#160 #160#160 #160#160 #160#160 #160All of this is well and good, but, at least at this time, with respect to Smucker’s two pending applications, the patent system appears to be working.#160 When the decision in the reexamination is made, we will know for sure.