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[john6422]

I'm hoping someone qualified on this board can help me out.  With the analogy I'm about to present comments and answers should answer my question without disclosing my idea.   Ok, I'm sure everyone is aware of frozen pretzel sticks filled with cheese that you put in the microwave for about a minute and they are ready to eat.  Now suppose it is the year 1980 and these never existed, but of course the traditional pretzels that look like figure 8's have been out for decades and frozen pretzel sticks have also been out for decades, but nothing with cheese inside of them.    Once again, it is 1980 and while eating pretzel sticks I come up with this clever idea of pretzel sticks with cheese inside.  Yes, I've bought pretzels at the mall where you could get cheese as a topping, but I never came across a pretzel stick that has cheese inside of it.    I realize consumers like pretzel and cheese because it is sold  in malls across the country, so what a great idea to have frozen pretzel sticks with cheese inside of them.  Of course, I want to capitalize on my idea so my first instict is to get a patent.  Now here is where I need help.  Would something like this be patentable??   Once again, we are assuming it is 1980 and frozen pretzel sticks have existed for decades, however cheese filled pretzel sticks have never existed.    

If this would be patentable what type of patent would it qualify for, utility, design, or plant?   Utility would seem impossible unless I invented a way of getting the cheese into the pretzel stick and since the idea of cheese inside a pretzel stick is what I thought of and I have no tool and die or machinery background I really don't think I could come up with a process of doing this, so it would seem an utility patent would be out of the question.  The next option would be a plant patent and this would also be out of the question for obvious reasons.  This leaves one last alternative and that is the design patent.  Remember I just want to protect my idea of having cheese inside of a pretzel stick and not how to get the cheese into the pretzel stick, so this would seem like the most logical choice, however when I read up on design patents this too seems far fetched, but it does seem like the best choice of the three.  So I guess my question is once again which of these three types of patents would this likely qualify for, if any?    

The type of patent is probably the least of my worries and what I would like to know more importantly, if someone could enlighten me, are the reasons why I probably wouldn't get a patent or the reasons why I would.  Now here are my reasons why I don't think it would be granted a patent. First, I did not invent cheese nor did I invent the pretzel.   Second, fillings inside  a dough product or for that matter any pastry product have been around for decades- i.e. donuts, turnovers, ravioli- so the concept of having cheese inside a pretzel stick could be met with the arguement that fillings inside dough products are nothing new, but hopefully I'm incorrect here.

Now here are my reasons why I think it would be patentable.  First, let's go through the three criteria for a patent- usefulness, novelty, non-obviousness.   The usefulness criteria would be easy to meet because this invention would be "useful" as a comsumable food product.    Next we have "novelty", remember no pretzel company, business, or person has ever produced a pretzel stick with cheese in it,  so it would be safe to assume that the novelty criteria wouldn't be a problem or at least I don't think it would be.  Now for the third and final criteria which is non-obviousness and this where I believe there could be some problems, but I believe I have a strong argument as to why there shouldn't be.    Going back to what I said before about other dough products having fillings inside of them this is where I believe this idea could be shot down and therefore be unpatentable.  

On the other hand, this is what I would argue to the patent examiner.   If this was so obvious then why has this idea of cheese inside pretzel sticks never been done before?   Furthermore, I approached a few pretzel companies about licensing this idea and now they are all producing and selling pretzel sticks with cheese in them so if this was so obvious before why weren't all these companies making these before?  They only began making them after  I approached them about licensing my idea or in other words they stole my idea.    I'm not sure if this would be a valid argument to a patent examiner, but to me it seems what the market does after they learn about your idea relative to what they did before would carry alot of weight in terms of trying to meet the non-obviousness criteria.   I guess I will leave it up to the experts for on whether or not this is a valid argument.  

cont>>>

[MYK]

Look at the Smuckers crustless peanut butter and jelly sandwich patent.  FYI, Google has a patent search engine at
http://www.google.com/patents

BTW, if you have a further question after reading that, please consider asking your question as a single sentence, beginning with a capital letter and ending with a question mark.

[john6422]

MYK, thanks for the response and the additional info about the google patent search.   Actually, I've read many articles on the smuckers patent and I ended up back to square one- alot of useful info, but I still wasn't able to conclude anything.  I realize patent law is one of the toughest types of law with no clear cut answers and alot of subjectivity which probably explains why it can take years to get a patent approved. 

[Lightning50]

Utility patents are the type that would cover the described invention.

If the facts are as stated, novelty is not an issue for obtaining a patent with narrow claims. Of course, the fact that you are not aware of anyone else putting cheese in a pretzel before doesn't mean that they haven't. During examination a couple years after filing, the examiner will spend a couple hours searching through patents and published applications. He may find something that you were unaware of because it wasn't yet published when you looked. If the patent ends up in litigation, the accused infringer will put in considerable effort looking for any evidence that someone else put cheese in a pretzel earlier. The fact that others have put fillings, including cheese, in dough products previously would limit the scope of your claims to specifically pretzels and maybe even specifically cheese in pretzels.

As you observe, obviousness is the thornier issue. It is worth noting that patents that push the boundaries of obviousness are often the most financially valuable if allowed. The question an examiner would be faced with is whether a person of ordinary skill in pretzel making would have a reason to combine the known fact that people like cheese with pretzels and the known fact that dough products can be filled with cheese. Evidence that people didn't start doing it until you suggested it do carry some weight in that evaluation.

If you are evaluating the decision of filing a patent application after you have attempted to sell the idea to pretzel makers, the timing of that attempt is significant. You cannot get a patent if you attempted to sell the idea more than one year before you file for the patent.

Another barrier, based on what you have stated, is that you are not in a position to figure out the process for getting the cheese into the pretzels. In order to get a patent, you must provide an "enabling disclosure" providing enough information for someone in the pretzel business to make the cheese filled pretzels.

[CriterionD]

If this would be patentable what type of patent would it qualify for, utility, design, or plant?   Utility would seem impossible unless I invented a way of getting the cheese into the pretzel stick and since the idea of cheese inside a pretzel stick is what I thought of and I have no tool and die or machinery background I really don't think I could come up with a process of doing this, so it would seem an utility patent would be out of the question.  

Is your invention meant to be useful?  i.e. did you think to put cheese in a pretzel because it would taste better and/or might have increased nutritional value?  Or might someone else fill cheese in a pretzel for these purposes?  Than you are looking for a utility patent, as Lightning points out.  A design patent could be applicable depending on product design, but a design patent only protect's a product's outward design/appearance and it only does so in the event the design does not affect the product's functionality in anyway.

The type of patent is probably the least of my worries and what I would like to know more importantly, if someone could enlighten me, are the reasons why I probably wouldn't get a patent or the reasons why I would.  

As Lightning points out, the biggest problem here though is you say you can't come up with a process of making or manufacturing this product.

First, I did not invent cheese nor did I invent the pretzel.

This is irrelevant 

fillings inside  a dough product or for that matter any pastry product have been around for decades- i.e. donuts, turnovers, ravioli- so the concept of having cheese inside a pretzel stick could be met with the arguement that fillings inside dough products are nothing new

The fact that fillings inside dough products are nothing new is irrelevant at least as far as a novelty requirement is concerned (it just limits the scope of patent protection available to you).  However, this could be a factor in determining whether or not your invention is obvious.

On the other hand, this is what I would argue to the patent examiner.   If this was so obvious then why has this idea of cheese inside pretzel sticks never been done before?  

Perhaps whoever wrote your patent could elaborate on this subject (without technically evoking an "obviousness" discussion) in the background/summary section of your patent app.  One thing you might want to establish is that not only has it not been done before but but there has always been reason for manufacturers to believe that such a product would be successful.

They only began making them after  I approached them about licensing my idea or in other words they stole my idea.

Perhaps your idea isn't really novel then, so maybe this whole discussion is moot.

If the facts are as stated, novelty is not an issue for obtaining a patent with narrow claims. Of course, the fact that you are not aware of anyone else putting cheese in a pretzel before doesn't mean that they haven't. During examination a couple years after filing, the examiner will spend a couple hours searching through patents and published applications. He may find something that you were unaware of because it wasn't yet published when you looked. If the patent ends up in litigation, the accused infringer will put in considerable effort looking for any evidence that someone else put cheese in a pretzel earlier. The fact that others have put fillings, including cheese, in dough products previously would limit the scope of your claims to specifically pretzels and maybe even specifically cheese in pretzels.

As you observe, obviousness is the thornier issue. It is worth noting that patents that push the boundaries of obviousness are often the most financially valuable if allowed. The question an examiner would be faced with is whether a person of ordinary skill in pretzel making would have a reason to combine the known fact that people like cheese with pretzels and the known fact that dough products can be filled with cheese. .

Also note that even if a USPTO Examiner doesn't find anything, it doesn't necessarily mean that the examiner did not miss some prior art which could invalidate your patent even if it did issue.  USPTO searches are of pretty decent quality but are conducted with operational efficiency in mind and are far from perfect (and "perfect" is impossible to come by when searching for prior art, anyway).  Likewise, patents that push the boundaries of obviousness can be the most valuable patents, but they are also the patents which are most likely to be found invalid in a court of law after the fact due to obviousness issues.

[JimIvey]

If this was so obvious then why has this idea of cheese inside pretzel sticks never been done before?

That's the age-old question.  How about this?  A steel box in which the 6 panels making the box are fastened together entirely with left-handed screws!!!  Never been done before!!!  (Okay, you geeky prior art wonks out there, let's assume for the sake of argument that it hasn't been done before.)

If it's so obvious, why hasn't it ever been done before?  I would expect an examiner to argue (assuming arguendo the examiner would actually take the time to make a compelling argument for obviousness -- haven't seen one in a while) that right-handed and left-handed screws are known replacements for one another and each is equally capable of holding the sort of torque-free joints found in applicant's box.  The fact that one direction/orientation of screw has become standard and the other has become the exception has nothing to do with the relative technological merits of each.

However, in the vast majority of situations in which something is truly novel, it's also non-obvious.

Just a quick observation:  our law uses the word "obvious" as a standard for patentability.  However, most of the rejections I see prove no more than the invention was conceivable and perhaps feasible at the time of invention; not that it was obvious.

How many times has each of us followed directions to some place (even from Google Maps or some other map site) and remarked to ourself, "Yeah, I eventually got there, but it wasn't obvious from these directions"?

In common language, "obvious" means one thing, yet in patent/legal circles "obvious" means something entirely different.  I'm start to preface "obvious" in my responses with things like "so plain-as-the-nose-on-your-face" to highlight this point.  Non-obviousness used to require a "flash of genius".  So, anything less that an amazing act of a genius was "obvious".  Our legislators could have used language other than "obvious" -- could have used "less than an ingenious improvement over" instead.  Spend some time thinking about how we use "obvious" in every day language and compare that with the PTO concept of "obviousness". 

Furthermore, I approached a few pretzel companies about licensing this idea and now they are all producing and selling pretzel sticks with cheese in them so if this was so obvious before why weren't all these companies making these before?  They only began making them after I approached them about licensing my idea or in other words they stole my idea.

I believe this falls squarely on one of the "secondary considerations" for non-obviousness -- wide-spread adoption once publicly disclosed.  Good luck arguing that.  Like I mentioned above, the PTO has a very limited view of what's "obvious".  Feasible and conceivable today (not at the time the invention was made)?  Then, it's obvious.

Regards.

[Mike B]

If this was so obvious then why has this idea of cheese inside pretzel sticks never been done before?

That's the age-old question.  How about this?  A steel box in which the 6 panels making the box are fastened together entirely with left-handed screws!!!  Never been done before!!!  (Okay, you geeky prior art wonks out there, let's assume for the sake of argument that it hasn't been done before.)

If it's so obvious, why hasn't it ever been done before?  I would expect an examiner to argue (assuming arguendo the examiner would actually take the time to make a compelling argument for obviousness -- haven't seen one in a while) that right-handed and left-handed screws are known replacements for one another and each is equally capable of holding the sort of torque-free joints found in applicant's box.  The fact that one direction/orientation of screw has become standard and the other has become the exception has nothing to do with the relative technological merits of each.

However, in the vast majority of situations in which something is truly novel, it's also non-obvious.

Just a quick observation:  our law uses the word "obvious" as a standard for patentability.  However, most of the rejections I see prove no more than the invention was conceivable and perhaps feasible at the time of invention; not that it was obvious.

the question of novelty is a factual/objective question (i.e. was invention X with components a, b, and c disclosed before?). however, the question of obviousness is a subjective question (i.e. in light of the fact that invention X with components a and b existed before, does the addition of component c involve an inventive step?).   The clearest sign of an inventive step is when the new component provides a benefit or advantage that was not available previously in the prior art. This is because the irrefutable argument is, "Well, if it provides a benefit, and it was so obvious, then why was it not done before?" Do you see how this argument also relates back to novelty?  However, sometimes (very unusually) the invention only provides the public with a useful choice without any real benefits.   In this case, the arguments for inventivness can get really creative.  this is when secondary inventiveness arguments can come to the fore.

The benefits of your invention (the cheese insert) are added nutrition, value added manufacturing, nicer taste with maximum convenience. Convenience in serving of snacks (as opposed to laying out both chees and pretzels).   There is almost always a benefit (since most inventors try to solve a problem, or the invention is borne of a need).

[landonew]

Ok, a few things.

First off, you need not worry about disclosure on this forum because your invention is already disclosed under 102(b) statutory bar.  It is both "on sale in this country" and "known by others in this country" as of the date it was commercially exploited (or possibly sooner depending on whether or not there was an understanding of confidentiality during your conversations with the "prezel makers").   

Secondly, you need to find a method for "reducing your invention to practice".  Without constructive/actual Reduction to practice, the attorney who prepares your applicaiton will not be capable of providing an enabling disclosure.  Remember, you have 1 year from the date in which the product was offered for sale to the public to establish a filing date.  Regardless of the legitimacy of your claims, Any patent right you may or may not have will be extinguished if you fail to obtain a filing date within 1 year of the earliest prior art reference's prior art date. 

Thirdly, if there is ANY MERIT to this whatesoever then you should consult a licensed practitioner IMMEDIATELY.  I understand that you were hoping to get some free advice on this forum and it is not a bad place to do preliminary research.  From what i have read, the forum members are pointing you in the right direction.  Unfortunately, you should not feel comforatable relying on any advice (including advice contained in this post) given by any agent/attorney whose services you have not retained.  Regardless of the advisors competency, without the presence of a fiduciary duty it is essentially "friendly advice" and not a "legal recommendation". 

Bottom line.  Consult a registered practitioner regarding your claim.  Patent law is EXTREMELLY complex and it is impossible to give you advice given the generic hypo provided.  Good luck with your idea.