A spoonful of commercial success overcomes the rejection of the obvious | Jones Day

[co-author: Christopher Dorsett]*

The Patent Trial and Appeal Board (PTAB) recently reversed evidence rejections based on a plaintiff demonstrating the commercial success of a baby spoon, in Ex Parte Doug Gonterman and Jessica Lineberry. The PTAB found sufficient commercial success in the form of sales data, and that this success was directly attributable to the unique characteristics of the applicant’s product. This success overcame prior art directed at spoons dating back to 1948.

The application at issue related to NumNum LLC’s Pre-Spoon GOOtensil™. The Pre-Spoon GOOtensil™ is “a personal feeding device” designed to help young children self-feed. Three independent claims were considered on appeal, including independent claim 1, which states:

CLAIMS 1. Utensil comprising:

a rounded handle end; and

a food end consisting of an outer edge and a non-concave surface having arms extending therein,

wherein the utensil is about four inches long,

wherein the food end is to enter a person’s mouth, and

wherein the arms in combination with portions of the non-concave surface together define a food retaining edge, wherein the food retaining edge defines a hole.

During the prosecution, the Examiner dismissed the independent claims as obvious by using several prior art references dating back to 1948, including a slotted spoon and a flat mixing spoon. In light of these disclosures and various other prior art disclosures of spoons, the Examiner has determined that it would have been obvious to those skilled in the art to combine the known elements and that such a combination would yield results predictable.

To determine whether the applied prior art references could be overcome by commercial success, the PTAB applied a two-part test whereby the claimant needs: (1) a demonstration of a link between the claimed invention as set forth in the independent claims and commercial success and (2) to demonstrate actual commercial success by showing significant sales of the incorporated product in the relevant market. The plaintiff bears the burden of proof for both.

Link between claimed invention and commercial success

To assess whether NumNum demonstrated a link between the independent claims and its commercial success, the PTAB first compared the description of the utensil in the specification with the NumNum product. He determined that the independent claims incorporated into the “Pre-spoon GOOtensil™” are based on a close comparison between the application specification and the NumNum product. For example, the PTAB compared the images of the Pre-spoon GOOtensil™ product with the numbers in the patent application and determined that the images mirror each other. In addition, all features of the Pre-spoon GOOtensil™ product images have been cited by the independent claims. Further, as NumNum only sells one product, the PTAB was satisfied by the inventor’s statement that the products substantially embody the claimed invention as set forth in the independent claims.

Next, the PTAB considered whether the commercial success of the Pre-spoon GOOtensil™ product was attributable to the unique characteristics of the invention. The PTAB found it particularly compelling that the product did not contain any additional elements other than those detailed in the claims of the application. In addition, the PTAB was convinced by the price of the Pre-Spoon GOOtensil ™ at a price almost double the amount of other spoons designed for children who did not have the elements claimed. The higher price tag combined with continued success proved to be compelling evidence of consumer preference for the spoon’s unique features. Similarly, the PTAB found that a small amount of marketing and advertising undertaken by NumNum, and the small overall size of the company weighed in favor of demonstrating its commercial success was primarily due to the claimed features.

Real business success

With respect to actual commercial success, the PTAB concluded that the Examiner’s erroneous discounting of NumNum’s evidence regarding data regarding its relevant market share was a critical error. The PTAB reiterated that while market data combined with sales figures can provide stronger evidence of business success, sales data alone can also be evidence of business success. NumNum presented year-over-year sales data showing an increase in sales from $37,000 in 2013 to projected sales of $1,200,000 in 2020. The PTAB found these to be convincing evidence on its own, even in the absence of data on its share of the baby spoon market. .


The commercial success of a claimed product is therefore a viable, albeit rare, option to overcome a denial of evidence. A candidate bears the burden of proof to establish such success. It must demonstrate not only that the claimed product is commercially successful based on sales or market share, but also that it is the features of the product sought for patentability that lead to commercial success. Although the PTAB did not address the possible obstacles to patentability induced by the sale of a commercial product, applicants should be aware of the interplay between its commercial success and the public sale of the products to be patented.

* Chris is a summer associate in Jones Day’s San Diego office.

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