PRE Brands LLC

Patent Trials and Appeals Board

Sep 15, 2020

2019005567 (P.T.A.B. Sep. 15, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/191,107 06/23/2016 Lenny LEBOVICH 15240-14 9712
28441 7590 09/15/2020
BGL/Chicago
P.O. Box 10395
Chicago, IL 60610
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
09/15/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________
Ex parte LENNY LEBOVICH
_________________
Appeal 2019-005567
Application 15/191,107
Technology Center 1700
_________________
Before JEFFREY T. SMITH, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge BEST.
Opinion Dissenting filed by Administrative Patent Judge SMITH.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 8–15, 21, and 24–30 of
Application 15/191,107. Final Act. (May 10, 2018). We have jurisdiction
under 35 U.S.C. § 6.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies PRE Brands as the real party in interest.
Appeal Br. 1.
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A telephonic hearing was held in this appeal on June 24, 2020.2
For the reasons set forth below, we reverse.
I. BACKGROUND
The ’107 Application describes food packaging that allows the
consumer to see the package contents from all angles while still permitting
robust labeling of the package. Spec. ¶ 2. Figure 6 of the ’107 Application is
illustrative and is reproduced below:

Figure 6 illustrates a food product within the transparent
film that is secured to the backer card. Spec. ¶ 19.
As shown in Figure 6, backer card 102 provides a surface for securing
transparent film 104 and for carrying printed information regarding the

2 This hearing was conducted under the provisions of the Board’s LEAP
program, which gave Appellant’s counsel 15 extra minutes of argument
time.
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product. Id. ¶ 24. Transparent film 104 includes a cavity that contains food
item 112. Id. ¶ 29. The entire outside 122 of backer card 102 may be printed
with information without obscuring visibility of food item 112. Id. Due to
the manner of attachment of transparent film 104 to backer card 102, a
consumer can inspect all sides of food item 112. Id.
Claim 1 is representative of the ’107 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A packaged food assembly, comprising:
a backer card having information printed thereon;
a transparent film disposed with at least a portion
adjacent the backer card, the transparent film having a front
side, a back side that faces the backer card opposite the front
side, and a cavity disposed between the front and back sides;
and
a meat item disposed in the cavity that is unobscured by
the transparent film;
a perforation located between the cavity and the upper
portion of the transparent film;
wherein the transparent film is attached to the backer
card at an attachment location disposed above the cavity,
enabling a portion of transparent film below the attachment
location to move away from the backer card;
wherein the back side of the transparent film is flat and
the front side of the transparent film complements the shape of
the meat item, and the cavity is evacuated so that it is sized and
shaped to house the meat item and does not extend laterally
beyond the backer card; and
wherein the packaged food assembly permits a consumer
to examine the meat item from all sides while also allowing for
display of written information in a frontward facing direction
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on an area that is greater in size than the front side of the
transparent film.
Appeal Br. 39.
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–4, 8–10, 21, and 25–27 are rejected under 35 U.S.C.
§ 103 as unpatentable over the combination of Cook,3
Weinberg,4 Grinstead,5 Runner,6 Grottrup,7 Gerber,8 Levy,9 and
Salfisberg.10 Final Act. 2.
2. Claims 11 and 28–30 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Cook, Weinberg,
Grinstead, Runner, Grottrup, Gerber, Levy, Salfisberg, and
Becker.11 Final Act. 9.
3. Claims 12–14 and 24 are rejected under 35 U.S.C. § 103 over
the combination of Cook, Gerber, Grottrup, Salfisberg, Levy,
Weinberg, Runner, and Becker. Final Act. 10.

3 US 3,730,738, issued May 1, 1973.
4 US 3,102,034, issued Aug. 27, 1963.
5 US 2,623,826, issued Dec. 30, 1952.
6 US 2,272,623, issued Feb. 10, 1942.
7 US 3,946,869, issued Mar. 30, 1976.
8 US 3,112,827, issued Dec. 3, 1963.
9 US 7,789,233 B2, issued Sept. 7, 2010.
10 US 2,139,040, issued Dec. 6, 1938.
11 US 3,223,233, issued Dec. 14, 1965.
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4. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Cook, Gerber, Grottrup, Salfisberg,
Levy, Weinberg, Runner, Becker, and Grinstead. Final Act. 15.
5. Claims 1–4, 9, 10, and 25–27 are rejected under 35 U.S.C.
§ 103 as unpatentable over the combination of Gerber, Cook,
Grottrup, Weinberg, Grinstead, and Runner. Final Act. 15.
6. Claims 4 and 8 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Gerber, Cook, Grottrup,
Weinberg, Grinstead, Runner, and Levy. Final Act. 20.
7. Claims 11 and 28–30 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Gerber, Cook, Grottrup,
Weinberg, Grinstead, Runner, and Becker. Final Act. 21.
8. Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Gerber, Cook, Grottrup, Weinberg,
Grinstead, Runner, and Salfisberg. Final Act. 22.
9. Claims 12–14 and 24 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Gerber, Cook, Grinstead,
Levy, Grottrup, Weinberg, Runner, and Becker. Final Act. 23.
10. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Gerber, Cook, Grinstead, Levy,
Grottrup, Weinberg, Runner, Becker, and Grinstead. Final
Act. 28.
III. DISCUSSION
Appellant argues for reversal of all of the rejections with respect to all
claims as an undifferentiated group. See generally Appeal Br. 14–38. We,
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therefore, select claim 1 as representative of the claims on appeal. 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
Appellant’s arguments for reversal of the pending rejections fall along
two lines of attack. Appeal Br. 14–38. First, Appellant argues that the
Examiner failed to establish a prima facie case of obviousness. Id. at 14–22.
Second, Appellant argues that any prima facie case of obviousness is
outweighed by the objective evidence of nonobviousness provided to the
Examiner during prosecution. Id. at 22–38. We address these arguments
separately.
A. The Examiner has established a prima facie case of
obviousness
The Examiner rejected claims 1–4, 8–10, 21, and 24–30 of the ’107
Application as obvious based upon various combinations of Cook and
Gerber with a variety of additional references. See Final Act. 2–28. In
particular, the Examiner has entered two sets of rejections of the claims at
issue. The first set of rejections—identified as Rejections 1–4 above—rely
upon Cook as the base reference and Gerber as a secondary reference. The
second set of rejections—identified as Rejections 5–10 above—rely upon
Gerber as the base reference and Cook as a secondary reference.
We address each set of rejections below.
1. Rejections relying upon Cook as the base reference
Appellant argues that each of the rejections is improper because the
Examiner erred by finding that a person of ordinary skill in the art at the
time of the invention would have combined Cook and Gerber in the manner
set forth in the rejection. Appeal Br. 14–22. Appellant states that “[a]ll of the
examiner’s reasons for why the combination of Cook and Gerber is allegedly
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obvious are unpersuasive.” Id. at 14. Appellant specifically presents three
arguments for reversal of these rejections. Id. at 15–22.
Because Gerber is a cumulative reference, we need not consider the
merits of these arguments.
Even if the combination of Cook as a base reference with Gerber as a
secondary reference is improper, Gerber is a cumulative reference. Gerber,
therefore, is not needed for the Examiner to have demonstrated a prima facie
case of obviousness for any of the claims rejected using Cook as a base
reference.
When using Cook as a base reference, the Examiner found that Cook
neither described nor suggested several limitations of claim 1 and relied
upon Gerber—in part—to supply the missing description or suggestion. For
example, in rejection 1:
a) The Examiner found that Cook arguably suggested the
limitation regarding the size of the cavity in the packaging not “extend[ing]
laterally beyond the backer card.” Final Act. 5. The Examiner further relied
upon both Grottrup and Gerber to teach this limitation. Id. (citing Grottrup
Fig. 9; Gerber Figs. 1, 3).
b) The Examiner found that Cook does not describe or suggest the
limitation “a backer card having information printed thereon.” Id. at 6. The
Examiner further found that Gerber and Levy each describe a backer card
having product information printed thereon. Id.
c) The Examiner found that the backer card as taught by Cook
also allows for display of written information in a frontward facing
direction, but found that Cook did not necessarily describe the limitation “an
area that is greater in size than the front side of the transparent film.” Id. at 7.
The Examiner, however, also found that “Grottrup and Gerber both teach a
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backer card having an area that is greater in size than the front side of the
transparent film.” Id.
Thus, in rejecting claim 1 while using Cook as a base reference, the
Examiner used Gerber in a cumulative manner. Therefore, even if the
Examiner erred in finding that Cook and Gerber could be combined in the
manner relied upon in the rejection, this error was harmless. We, therefore,
cannot reverse Rejections 1–4 on this basis.
2. Rejections relying upon Gerber as the base reference
The Examiner rejected claims 1–4, 8–15, 21, and 24–30 in a series of
six rejections using Gerber as the base reference. Final Act. 15–28. Because
we have selected claim 1 as representative of the appealed claims, we focus
on the rejection of claim 1 as unpatentable over the combination of Gerber,
Cook, Grottrup, Weinberg, Grinstead, and Runner. Id. at 15.
Appellant argues that this rejection of claim 1 should be reversed
because Gerber teaches away from combination with Cook. Appeal Br. 20–
22. In particular, Appellant argues that Gerber teaches away from
combination with Cook because a person of ordinary skill in the art would
not have been motivated to modify Gerber to include “a perforation [located]
between the cavity and the upper portion of the transparent film” because
Gerber teaches away from such a modification. Id. at 21 (alteration in
original). Appellant concludes that “[s]ince Gerber teaches away from
providing a perforation as claimed, a [person of ordinary skill in the art]
would not use Gerber’s display card packaging along with Cook’s packaging
to create a packaged food assembly or method for packaging a perishable
food product as claimed.” Id. at 22.
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Appellant’s argument regarding the combination of Gerber and Cook
is not persuasive because the Examiner did not rely upon Cook as teaching
anything about a perforation in the transparent film packaging.
In rejecting claim 1, the Examiner found, inter alia, that “[c]laim 1
differs from Gerber in specifically reciting that the package comprises a
meat item and wherein the back side of the transparent film is flat and the
front side of the transparent film complements the shape of the meat item.”
Final Act. 16. The Examiner further found that Cook describes a header and
backing board which comprises a transparent film package containing a food
item such as meat. Id. (citing Cook 1:57–58, 3:19–24, Fig. 8).12, 13
Thus, Appellant’s argument in its Appeal Brief is misdirected.
Gerber’s alleged purpose of reducing the likelihood that the article-
containing bag could be easily removed from the panels and fastener does
not teach away from the proposed modifications to Gerber made in view of
Cook.
In view of the foregoing, we determine that the Examiner did not err
by finding that a person of ordinary skill in the art at the time of the
invention would have combined Gerber with Cook to arrive at a packaged
meat product that would allow a consumer to inspect the contents of the

12 The Examiner also found that Cook describes the limitation “back side of
the transparent film is flat and the front side of the transparent film
complements the shape of the meat item.” Final Act. 17. This finding,
however, is cumulative because the Examiner found that Weinberg also
describes this limitation. Id.
13 Rather than rely on Cook for a description of a perforation, the Examiner
relies upon Runner and Grottrup as describing this limitation. Id. at 18
(citing Runner Fig. 1; page 1, left col., ll. 1–6; page 1, right col., ll. 23–33;
Grottrup, Fig. 9, 4:1–10).
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package while also benefiting from the extra printable space described by
Gerber. See Final Act. 16.
In its Reply Brief, however, Appellant broadens this teaching away
argument so that it is no longer limited to the combination of Gerber with
Cook. Reply Br. 5–6.
Normally, we would not consider an argument presented for the first
time in the Reply Brief, see 37 CFR § 41.41(b)(2) (2018), but Appellant’s
new, broader argument is responsive to assertions made for the first time in
the Examiner’s Answer, see Answer 11. In particular, the Examiner argues:
Regarding the alternative rejection that relies on Gerber
as the primary reference, it is noted that while Gerber teaches
the use of a staple, Gerber does not explicitly state that other
techniques of securement could not have been used. As such, it
is noted that Gerber does not specifically discuss the use of an
adhesive to secure the bag together with the folding of the
backer card. Furthermore, it would still have been within the
routine capabilities of one having ordinary skill in the art to
provide perforations between the cavity and an upper portion of
the transparent film in such a way that it would not have further
increased one’s ability to tear the package out from the backer
card, such as based on the number, size and depth of the
perforations. See the following references for further evidence
of perforations which can still maintain package integrity (see
US 2115122, page 1, column 1, lines 1-22 and lines 41-47; U.S.
4672684 - Column 4, lines 54-63; US 4618992 - column 2, line
64 to column 3, line 4; US 4567987 - the abstract; US 3348760
- column 2, lines 8-12; US 3791573 - column 4, lines 40-46).
Id.
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Rather than object to this new argument and additional evidence14 as
setting forth a new ground of rejection,15 Appellant replies that “even if a
perforation could be added that would not increase the ability to tear the
package, the examiner failed to explain the purpose of such a perforation” in
the proposed combination. Reply Br. 6. According to Appellant, this means
that the Examiner’s explanation as to why a person of ordinary skill in the
art would modify Gerber to include a perforation of any sort is insufficient.
Id.
We agree with Appellant on this point. Moreover, we note that the
newly-cited references describe the use of perforations that are tear-resistant
for purposes that differ from the use of the perforations in Appellant’s
packaging. For example, Prudden16 uses the perforations to provide a way
for liquid to access material on the inside of the packaging and suggests tea
bags as a representative use. Prudden 2:33–45.
Thus, we reverse the rejections of claims 1–4, 8–15, 21, and 24–30
over combinations of the prior art that rely upon Gerber as the base
reference.
B. Appellant’s objective evidence of nonobviousness is sufficient to
rebut the Examiner’s prima facie case of obviousness
Appellant argues that it has presented sufficient objective evidence of
nonobviousness to overcome the Examiner’s prima facie case. Because we

14 Appellant does not challenge the accuracy of the Examiner’s findings
regarding the content of the six newly-cited references.
15 A petition to the Director is the proper way to raise any such objection.
See In re Berger, 279 F.3d 975, 984–85 (Fed. Cir. 2002).
16 US 2,115,122, issued Apr. 26, 1938.
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have reversed the rejections that use Gerber as a base reference (identified as
Rejections 5–10 above), we need only consider this question with respect to
rejections that rely upon Cook as a base reference (identified as Rejections
1–4 above).
In this case, Appellant argues that it has presented the following types
of objective evidence of nonobviousness: (1) commercial success,
(2) industry praise and recognition, (3) solving a long-felt, unmet need for
consumer-friendly packaging, and (4) unexpected results. Appeal Br. 22–36.
In support of its argument, Appellant relies upon three declarations and each
declaration’s accompanying exhibits: the June 13, 2017 Declaration of
Lenny Lebovich (entered into record on June 14, 2017) (“Lebovich I”), the
January 17, 2018 Declaration of Lenny Lebovich (entered January 19, 2018)
(“Lebovich II”), and the January 16, 2018 Declaration of Jim Warner
(entered January 19, 2018) (“Warner Decl.”).17
We address each of these categories of objective evidence separately
to determine whether Appellant has, in fact, presented evidence of the sort
claimed.
1. Appellant has presented evidence of commercial success
“[T]o accord substantial weight to secondary considerations in an
obviousness analysis, the evidence of secondary considerations must have a
nexus to the claims, i.e., there must be a legally and factually sufficient
connection between the evidence and the patented invention.” Fox Factory,

17 At the hearing, Appellant used demonstrative exhibits that improperly
included evidence not present in any of its declarations, including recent
sales data. We have not considered such information because it is not part of
the record. See Tr. 3–4.
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Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (internal quotation
marks omitted). The patentee bears the burden of showing that a nexus
exists. WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed.
Cir. 1999). A patentee meets this burden by showing correspondence
between the objective evidence and the claim’s scope. Henny Penny Corp. v.
Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019).
Appellant argues that it has presented evidence of commercial success
in each of the declarations—Lebovich I, Lebovich II, Warner Decl.—
submitted during prosecution. In particular, Appellant argues that since
entering the market using packaging encompassed by the ’107 Application’s
claims in 2015, its sales have grown every year and have grown by a much
greater percentage than its competitors in the grass-fed beef market.18

18 The dissent takes issue with Appellant’s characterization of the relevant
market as grass-fed beef and contends that the correct market is all beef
products. Market definition is not an issue unique to patent law. We believe
that antitrust law provides a useful definition of the relevant product market:
In the most general terms, a product market . . . consists
of all goods or services that buyers view as close substitutes.
That means if the price of one product goes up, and in response
consumers switch to buying a different product so that the price
increase is not profitable, those two products may be in the
same product market because consumers will substitute those
products based on changes in relative prices.
Markets | Federal Trade Commission, Federal Trade Commission,
https://www.ftc.gov/tips-advice/competition-guidance/guide-antitrust-
laws/mergers/markets (last viewed September 4, 2020).
Our intuition is that consumers who buy organic, grass-fed beef are
relatively reluctant to substitute non-organic, corn- or grain-fed or finished
beef for grass-fed beef. This is demonstrated by the fact that such consumers
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Appeal Br. 24 (citing Lebovich I ¶ 9, Lebovich II ¶ 21). Appellant especially
emphasizes that it experienced more than a 475% year-on-year growth in
2016 while four of its competitors experienced less growth, and, in some
cases, a slight decline in that time period. Id. (citing Lebovich II ¶ 21). We
note that the record is devoid of evidence concerning the change in the size
of the grass-fed beef market in the relevant time frame.19
In view of the foregoing, we find that Appellant has provided
sufficient evidence of the commercial success of its products.
In this appeal, however, the question of how much weight to give this
evidence of commercial success turns upon whether or not Appellant has
established a nexus between the commercial success and the claimed
invention. See Fox Factory, 944 F.3d at 1373. Appellant argues that it is
entitled to a presumption of nexus because its products correspond to the
claims at issue. Appeal Br. 29–31.

are willing to pay a premium price for organic, grass-fed beef. This suggests
that grass-fed beef is in a different market from beef in general.
More importantly, however, the only evidence in the record
concerning market definition comes from Appellant, who provided
declaration testimony that grass-fed beef is a well-defined product market
that is different from the market for beef in general. See, e.g., Lebovich II
¶¶ 6–7, Exs. 1–2.
19 The dissent argues that Appellant has not shown that its commercial
success is due to the claimed invention rather than the redesign of the
graphics on the packaging. The redesigned packaging, however, launched in
the fall of 2016. Lebovich II, Ex. B2. The vast majority of Appellant’s sales
growth occurred prior to launch of the redesigned packaging. See id. at Ex.
3. If anything, the rate of growth of Appellant’s sales slowed after
introduction of the redesigned packaging. Id.
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A patentee is entitled to a rebuttable presumption of nexus between
the asserted evidence of secondary considerations and a patent claim if the
patentee shows that the asserted evidence is tied to a specific product and
that the product “is the invention disclosed and claimed.” Demaco Corp. v.
F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)
(emphasis added); see also SightSound Techs., LLC v. Apple Inc., 809 F.3d
1307, 1319 (Fed. Cir. 2015) (“If a product both embodies the claimed
features and is coextensive with the claims at issue, a nexus is presumed. In
other words, a nexus exists if the commercial success of a product is limited
to the features of the claimed invention.” (citation and internal quotation
marks omitted)); J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563
(Fed. Cir. 1997). “That is, presuming nexus is appropriate when the patentee
shows that the asserted objective evidence is tied to a specific product and
that product embodies the claimed features, and is coextensive with them.”
Fox Factory, 944 F.3d at 1373 (internal quotation marks omitted).
Appellant presented declaration evidence that its products are
reasonably commensurate with the claims’ scope. See Lebovich I ¶ 4,
Warner Decl. ¶¶ 14–16.
The Examiner found that Appellant’s products were not
commensurate in scope with the claims. Answer 11–12. In particular, the
Examiner argues that Appellant’s products are not commensurate in scope
with the claims because Appellant only sells grass-fed beef in the claimed
packaging. Id. The Examiner points out that independent claim 1 recites that
the packaged item is meat, which is a much broader category than grass-fed
beef.
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We cannot sustain the Examiner’s finding because it is not consistent
with Federal Circuit precedent. As the Federal Circuit has pointed out,
[i]t seems unlikely that a company would sell a product
containing multiple, redundant embodiments of a patented
invention. . . . Rather, [the Federal Circuit has] consistently held
that a patent applicant need not sell every conceivable
embodiment of the claims . . . to rely upon evidence of
commercial success. Commercial success evidence should be
considered so long as what was sold was within the scope of the
claims.
In re Glatt Air Techniques, Inc., 630 F.3d 1026, 1030 (Fed. Cir. 2011)
(internal quotation marks and citations omitted, emphasis added); see also
ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1221 (Fed. Cir. 2016).
Although a patentee need not prove that the commercial success of the
patented invention is not due to factors other than the patented invention,
Demaco Corp., 851 F.2d at 1394 (“A requirement for proof of the negative
of all imaginable contributing factors would be unfairly burdensome, and
contrary to the ordinary rules of evidence.”), Appellant does present
evidence that tends to rule out possible alternative explanations for its
commercial success.
First, Appellant points to evidence that consumers praise its
packaging for features corresponding aspects of the packaging recited in the
claims. Appeal Br. 25–28 (citing Lebovich I ¶¶ 23–27, Lebovich II ¶ 17).
Lebovich I describes the customer praise it reports as unsolicited. Paragraphs
16 and 17 of Lebovich II identify additional consumer feedback, but it is
unknown whether this feedback was unsolicited, solicited, or compensated.
Tr. 25–26. In particular, Appellant presented evidence of consumer praise
for the transparent film that permitted view of the entirety of the packaged
meat product, the perforation between the cavity and the upper portion of the
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film that allows a consumer to detach the backer card, and the information
displayed on the backer card. Appeal Br. 25–28.
Second, Appellant points to opinion evidence that consumers regard
grass-fed beef as a staple product. See, e.g., Lebovich I ¶ 5. We note that
Appellant defines the term “staple product” in a specific manner that differs
from the commonly used definition.20 According to Mr. Lebovich,
Appellant’s founder and then-CEO, id. ¶ 3, staple goods are those where
“there is little differentiation between product offerings from one supplier
and another, and staple goods usually compete on the basis of price,” id. ¶ 5.
We note that Mr. Lebovich has extensive experience in the marketing of
beef, especially organic beef. See id. ¶ 3; Lebovich II ¶¶ 2–6. For the
purposes of this opinion, we use the definition provided by and used in
Appellant’s declarations. Doing otherwise hinders proper understanding of
Appellant’s evidence and arguments.21
Mr. Lebovich opined that Appellant’s success is due to its product
packaging. Lebovich I ¶ 6. In support of this opinion, Mr. Lebovich pointed
to evidence that product positioning within stores and price were not the
source of Appellant’s commercial success. Id. ¶¶ 7–8.

20 See, e.g., Staple | Definition of Staple at Dictionary.com, Dictionary.com,
https://www.dictionary.com/browse/staple (last viewed August 25, 2020)
(defining staple as a noun: “a basic or necessary item of food”; as an
adjective: “chiefly or largely dealt in or consumed,” “basic, chief, or
principal”).
21 The dissent appears not to recognize the special definition of the term
“staple” used in the declarations submitted by Appellant as evidence during
prosecution of the ’107 Application.
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At the hearing, we questioned Appellant regarding the existence of
evidence that the commercial success was due to the packaging rather than
the quality of the grass-fed beef contained in the packaging. See, e.g., Tr.
20–23. Here, the presence of the grass-fed beef as the packaged material is
an unclaimed feature of the product being sold. Thus, if the commercial
success is attributable to the quality of the grass-fed beef, presumption of a
nexus is inappropriate. Cf. Fox Factory, 944 F.3d at 1374–75 (explaining
that the presence of an unclaimed feature that amounts to a significant
addition to the claimed invention may make presumption of a nexus
inappropriate).
In response, Appellant argued that its beef is a staple product that is
differentiated by its unique packaging. Tr. 20–21. This argument is
somewhat undercut by one of the pieces of evidence submitted by Appellant.
In a “Package Case Study” published on the Packaging World website on
July 15, 2017, Anne Marie Mohan, Literal transparency helps sell grass-fed
beef, Packaging World (July 15, 2007), https://bit.ly/320Y6WY (Lebovich
II, Ex. B2), the quality of Appellant’s beef products is extolled:
[Appellant’s] beef products are sourced from Australia and
New Zealand, where conditions and practices allow them to
grow the best grass year-round. The company’s suppliers are
also held to some of the highest quality standards including
100% grass-fed, 100% pasture-raised, and no added hormones
or antibiotics. All [Appellant’s] steaks are hand-trimmed for
consistent thickness and weight, and products must meet the
company’s specified marbling scale, fat color, pH level, and
meat color to be considered [Appellant’s].
Id. at 1. Thus, the Packaging World article suggests that Appellant’s
products may be differentiated from its competitors by quality. Of course,
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these statements also might be marketing puffery provided to a reporter
interested in Appellant’s packaging.
At the end of the day, we suspect that the quality of the grass-fed beef
may drive Appellant’s commercial success and repeat sales, but we are not
able to take consumer surveys to obtain evidence one way or the other. Cf.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (explaining that the office has
no ability to obtain samples of the prior art or conduct experiments). We,
therefore, credit Mr. Lebovich’s testimony that the packaging is the source
of Appellant’s commercial success.
Thus, we find that Appellant is entitled to a presumption that a nexus
exists between the claimed invention and its commercial success.
2. Appellant has presented evidence of its industry praise of
an embodiment of the claimed invention
Appellant identified articles demonstrating that its invention had been
recognized as innovative in the packaging industry. See Lebovich I ¶¶ 23–
24; Lebovich II ¶ 18 (discussing Lebovich II, Exs. B1, B2). Finally,
Appellant reported that it had received an offer to license intellectual
property related to its inventive packaging. Lebovich I ¶ 21.
The Federal Circuit has held that industry praise is objective evidence
of nonobviousness. See, e.g., Apple Inc. v. Samsung Elecs. Co., 839 F.3d
1034, 1053 (Fed. Cir. 2016); Institut Pasteur v. Focarino, 738 F.3d 1337,
1347 (Fed. Cir. 2013) (“[I]ndustry praise . . . provides probative and cogent
evidence that one of ordinary skill in the art would not have reasonably
expected [the claimed invention].”); Power-One, Inc. v. Artesyn Techs., Inc.,
599 F.3d 1343, 1352 (Fed. Cir. 2010) (noting that industry praise tends to
indicate that the invention would not have been obvious). Similarly, licenses
showing industry respect for the invention constitute objective evidence of
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nonobviousness. Power Integrations, Inc. v. Fairchild Semiconductor Int’l,
Inc., 711 F.3d 1348, 1368 (Fed. Cir. 2013).
3. The claimed invention satisfies a long-felt but unmet need
Evidence that the invention satisfies a long-felt, unmet need weighs in
favor of nonobviousness because it is reasonable to infer that the need would
not have persisted if the solution actually were obvious. Apple, 839 F.3d at
1056 (Fed. Cir. 2016).
However, Appellant’s argument to that effect is only marginally
persuasive. Appellant’s argument consists of a recitation of the differences
between Appellant’s packaging and the packaging used by its competitors.
See Appeal Br. 32–33. In support of its argument, Appellant points to
Lebovich II and the Warner Declaration. Appeal Br. 32–33.
The only evidence that directly addresses the question of whether or
not the claimed invention satisfies a long-felt but unmet need is Mr.
Lebovich’s ipse dixit:
The packages described and depicted in Paragraph 7
illustrate consumers’ long-felt, unmet need for transparent
packaging of fresh, perishable food such as meat that still
includes necessary nutritional information, a need addressed by
the invention. Consumers have long demanded packaging for
fresh foods such as meat that permits them to examine the
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product from all angles so that they can select their preferred
piece.
Lebovich II ¶ 8. Mr. Lebovich does not provide any basis for his assertion
that consumers have ever perceived a need for transparent packaging of meat
products.22, 23
Mr. Warner’s declaration does not provide any evidence that he has
experience, let alone expertise, in the meat industry. See generally Warner
Decl. Mr. Warner’s declaration establishes that he relies upon Lebovich II at
the source of his knowledge regarding the industry. His declaration
compares Appellant’s packaging to its competitors’ packaging and finds that
Appellant’s packaging has several “consumer-friendly” features that are not
present in the competitors’ packaging. Id. ¶¶ 12–14. Appellant’s argument
based upon the Warner Declaration assumes that any feature that may be
described as “consumer-friendly” is something that consumers would have
felt they needed and therefore constitutes a long-felt, unmet need. This
argument assumes that consumers would have identified the problems with
the existing packaging and been dissatisfied with it. Appellant provides no
basis for this assumption.
Significantly, Appellant does not point us to any third-party evidence
discussing problems with existing packaging or acknowledging that
Appellant’s packaging solves long-felt problems with food packaging.

22 Speculation that Mr. Lebovich developed this knowledge during his 2010–
2012 consumer interviews, see Lebovich II ¶ 5, is inappropriate. Direct
testimony to this effect is needed.
23 Appellant does not argue that the consumer praise discussed above
provides evidence of a long-felt, unmet need. See Appeal Br. 31–33.
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In view of the foregoing, we find that Appellant has established,
barely, that its invention satisfies a long-felt, unmet need. However, the
evidentiary basis for the showing is so weak that this factor is entitled to
little weight in the ultimate obviousness determination.
4. Appellant has established the existence of unexpected
results
A demonstration that a claimed invention achieves unexpected results
relative to the prior art is objective evidence of nonobviousness. Galderma
Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 736 (Fed. Cir. 2013).
Appellant, relying upon the Warner Declaration, argues that it
presented evidence of unexpected results. See Appeal Br. 34–36. In
particular, Appellant argues that the claimed package design achieves
unexpected results in three ways.
First, Appellant argues that the novel product design “surprisingly
‘allows for the development of brand loyalty beyond what is typical for a
staple food like a perishable food item, and particularly [for] meat.’” Id. at
34 (quoting Warner Decl. ¶ 16). According to Mr. Warner, the claimed
design maximizes the space available for printing product information on
meat packaging. Warner Decl. ¶ 16. “After a customer uses the product, the
individual may safely retain the backer card that remains uncontaminated.
. . . The additional information and the ability to save the backer card
‘improves the connection consumers feel with the brand.’” Appeal Br. 34.
(quoting Warner Decl. ¶ 16).
Appellant has presented evidence that it has achieved some degree of
consumer loyalty and brand awareness. In particular, Appellant has
demonstrated that it has achieved a repeat purchase rate that is greater than
the repeat purchase rates of its closest competitors and of the average
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branded grass-fed beef product. Lebovich I ¶ 14. Appellant has also
presented other evidence demonstrating that it has achieved a degree of
consumer loyalty greater than experienced for other products in its market
segment. See Lebovich I ¶¶ 12–16.
In sum, we find that Appellant has demonstrated the surprising result
that it achieved some degree of brand loyalty in a market segment filled with
staple24 goods.
Second, Appellant argues that the claimed design “surprisingly allows
for an increased amount of visual graphic area without compromising
product visibility.” Appeal Br. 34–35 (citing Warner Decl. ¶¶ 17–20).
According to Appellant, prior to Appellant’s invention, a person of ordinary
skill in the art would have considered increasing the graphic area capacity on
meat packages to be inversely correlated with product visibility. Id. at 35.
Appellant claims that the innovative packaging unexpectedly provides both
100% visibility of the product and a large area for display of visual graphics.
Id. (citing Warner Decl. ¶ 17).
We do not consider this result surprising or unexpected relative to the
closest prior art. While it is true that appellant’s claimed package design has
the advantage of increased graphic display area and 100% visibility of the
meat product to the consumer, this is the predictable result of design choices
made by Appellant. Not every advantage of the claimed invention relative to
the prior art is correctly characterized as surprising or unexpected.
Third, Appellant argues that products embodying and reasonably
commensurate with the scope of the claims “surprisingly allow for improved

24 As the term “staple” is defined by Appellant’s declarants.
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display options in grocery stores over prior packaging.” Appeal Br. 35
(citing Warner Decl. ¶ 15). Specifically, Appellant argues that the ability to
display the meat standing vertically as well as laying horizontally is a
surprising and improved result because vertical display improves visibility
on store shelves. Id. at 36 (citing Lebovich II, Ex. B2).
As we have discussed in connection with the increased area for
printing graphics, not every advantage achieved by an invention relative to
the prior art is correctly described as surprising or unexpected. In this case,
the use of a rigid backer card would be expected to allow for vertical display
of meat products, while the use of a vacuum sealed package avoids the
problems encountered when Styrofoam tray packages are displayed
vertically. In sum, this is not an unexpected result.
In view of the foregoing, we find that Appellant has established the
existence of unexpected results with respect to the establishment of brand
awareness and loyalty in a market segment comprised of staple goods, but
not with regard to the increased area for display of graphic information or
vertical display of the products on store shelves.
5. Conclusion regarding obviousness
When, as here, an applicant presents objective evidence of
nonobviousness, the presumption of unpatentability created by the
Examiner’s identification of a prima facie case of obviousness dissolves, and
all of the evidence must be weighed together to reach a final conclusion
regarding the obviousness of the claim in question. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[P]atentability is determined on the totality of
the record, by a preponderance of evidence with due consideration to
persuasiveness of argument.” Id.
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As discussed above, we have determined that the Examiner did not err
in concluding that claim 1 is prima facie obvious over the combination of
Cook, Weinberg, Grinstead, Runner, Grottrup, Gerber, Levy, and Salfisberg.
See § III.A.1. However, when presented with Appellant’s arguments
regarding secondary considerations, the Examiner erred by finding that
Appellant’s evidence of commercial success was not commensurate in scope
with the claims. The Examiner also erred in concluding that Appellant’s
presentation of objective evidence of nonobviousness was insufficient to
overcome the prior art rejection.
For the reasons discussed above, we have found that Appellant
demonstrated the existence of objective evidence of nonobviousness in the
form of commercial success, industry praise, satisfaction of a long-felt,
unmet need, and unexpected results. While Appellant’s evidence of
satisfaction of a long-felt, unmet need is exceedingly weak, the evidence of
commercial success and industry praise are particularly strong.
In contrast, the prima facie case of obviousness for claim 1 over the
combination of Cook, Weinberg, Grinstead, Runner, Grottrup, Gerber, Levy,
and Salfisberg as set forth by the Examiner is—in our view—only average.
When we consider Appellant’s evidence of objective evidence of
nonobviousness together with the prima facie case of obviousness of claim
1, we think that, on balance, a preponderance of the evidence supports a
conclusion that claim 1 is patentable over the cited prior art.
In view of the foregoing, we reverse the rejections of claims 1–4, 8–
15, 21, and 24–30 as unpatentable over the combinations of prior art relying
upon Cook as the base reference.
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IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 8–10, 21, 25–
27 103
Cook, Weinberg, Grinstead,
Runner, Grottrup, Gerber, Levy,
Salfisberg
1–4, 8–10, 21, 25–27
11, 28–30 103
Cook, Weinberg, Grinstead,
Runner, Grottrup, Gerber, Levy,
Salfisberg, Becker
11, 28–30
12–14, 24 103 Cook, Gerber, Grottrup, Salfisberg, Levy, Weinberg, Runner, Becker 12–14, 24
15 103
Cook, Gerber, Grottrup, Salfisberg,
Levy, Weinberg, Runner, Becker,
Grinstead
15
1–4, 9, 10, 25–27 103 Gerber, Cook, Grottrup, Weinberg, Grinstead, Runner
1–4, 9, 10,
25–27
4, 8 103 Gerber, Cook, Grottrup, Weinberg, Grinstead, Runner, Levy 4, 8
11, 28–30 103 Gerber, Cook, Grottrup, Weinberg, Grinstead, Runner, Becker 11, 28–30
21 103 Gerber, Cook, Grottrup, Weinberg, Grinstead, Runner, Salfisberg 21
12–14, 24 103
Gerber, Cook, Grinstead, Levy,
Grottrup, Weinberg, Runner,
Becker
12–14, 24
15 103
Gerber, Cook, Grinstead, Levy,
Grottrup, Weinberg, Runner,
Becker, Grinstead
15
Overall Outcome 1–4, 8–15, 21, 24–30
REVERSED

27
SMITH, Administrative Patent Judge, dissenting.
I respectfully dissent from the reversal of the rejections of claims 1–4,
8–15, 21, and 24–30 under 35 U.S.C. § 103 as specified in Rejections 1–4.1
Upon consideration of the evidence of record, I agree with the majority’s
decision to affirm the Examiner’s § 103 rejections (Rejections 1–4) for
essentially the reasons set out in the majority opinion and those presented by
the Examiner in the Answer. However, after carefully evaluating and
weighing both the evidence relied upon by the Examiner and the objective
evidence of non-obviousness Appellant provided, I respectfully dissent from
my colleagues’ final determinations regarding the obviousness rejections. I
add the following:
Secondary Considerations
Evidence of secondary considerations, such as that presented by
Appellant, must be considered in route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, the issue
of obviousness under 35 U.S.C. § 103 is considered anew, carefully

1 1. Claims 1–4, 8–10, 21, and 25–27 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Cook, Weinberg, Grinstead, Runner,
Grottrup, Gerber, Levy, and Salfisberg. Final Act. 2.
2. Claims 11 and 28–30 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Cook, Weinberg, Grinstead, Runner, Grottrup,
Gerber, Levy, Salfisberg, and Becker. Final Act. 9.
3. Claims 12–14 and 24 are rejected under 35 U.S.C. § 103 over the
combination of Cook, Gerber, Grottrup, Salfisberg, Levy, Weinberg,
Runner, and Becker. Final Act. 10.
4. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Cook, Gerber, Grottrup, Salfisberg, Levy, Weinberg,
Runner, Becker, and Grinstead. Final Act. 15.

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evaluating and weighing both the evidence the Examiner relied upon and the
objective evidence of nonobviousness Appellant provided. (See, e.g., In re
Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990)). We also are mindful
that objective evidence of non-obviousness in any given case may be entitled
to more or less weight depending on its nature and its relationship to the
merits of the invention (see Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 1538–39 (Fed. Cir. 1983)).
“For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention.” In re Huai-Hung Kao,
639 F.3d 1057, 1068 (Fed. Cir. 2011) (emphasis omitted) (quoting Wyers v.
Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)). “Evidence of
secondary considerations must be reasonably commensurate with the scope
of the claims.” Id.
According to the Specification, the technical field of the invention is
packaging, particularly “food packaging that enables complete visibility of
packaging contents while allowing for robust labeling of the package.” Spec.
¶ 2. The invention described by claim 1 specifies, inter alia, a packaged food
assembly, comprising a backer card having information printed thereon; a
transparent film disposed with at least a portion adjacent the backer card; the
transparent film having a front side, a back side that faces the backer card
opposite the front side, and a cavity disposed between the front and back
sides; a meat item disposed in the cavity that is unobscured by the
transparent film; and a perforation located between the cavity and the upper
portion of the transparent film.
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Commercial Success
Appellant argues that they have presented evidence of commercial
success in each of the declarations (Lebovich I, Lebovich II, Warner Decl.)
and Nielsen Perishables Group data for the “Fresh Beef Category” from
between the third quarter of 2014 and 2017 (Lebovich II, Ex. B3), submitted
during prosecution. Appeal Br. 24. Appellant argues there is a nexus
between the claims and the proffered evidence which is reasonably
commensurate in scope with the claims. Appeal Br. 29. Appellant
specifically states:
Evidence of the applicant’s commercial success in the
area of steaks and roasts is reasonably commensurate with the
scope of the claims, which are directed to packaging or methods
for packaging perishable food items, and meat specifically, for
claims 1-4, 8-11, 24-27, and is thus probative of commercial
success. The examiner alleges that “the sales data shown in
Exhibit B3 appears to be directed to the ‘fresh beef category’
(and ‘grass fed beef’) however, the claims are directed to ‘a
meat item’; ‘a perishable food’ and ‘a fresh meat product’ and
thus the data is not commensurate in scope with the claims.”
(Final Office Action ¶ 124.) “PRE Brands offers several meat
products [presented] in packaging covered by the claims.” (Ex.
A, 1st Lebovich Decl. ¶ 4.) As explained by the Federal Circuit,
the applicant does not need to produce objective evidence of
nonobviousness for every potential embodiment of the claim
since secondary considerations need only be reasonably
commensurate with the scope of the claims. Also, as discussed
above, customer testimonials and industry praise specifically
mentions benefits of the claimed packaging features in
combination. For example, see particular testimonials and
praise directed to claimed features in Section VII.C.1.b and
VII.C.1.c.
Appeal Br. 30 (alteration in original) (emphasis omitted).
To demonstrate nonobviousness based on commercial success,
Appellant must provide evidence that establishes the existence of
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commercial success, and a nexus between that success and the merits of the
claimed invention. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d
1317, 1324 (Fed. Cir. 2004). The evidence is required to show that “the
successful product is the invention disclosed and claimed.” J.T. Eaton & Co.
v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). To establish
a proper nexus between the claimed invention and the commercial success of
a product, Appellant must offer proof that the sales of the product were a
direct result of the unique characteristics of the claimed packaged food
assembly as opposed to other factors, such as the high quality of the grass-
fed beef contained within the packaging. See In re DBC, 545 F.3d 1373,
1384 (Fed. Cir. 2008) (finding no nexus, absent evidence that “the driving
force behind [the allegedly successful product’s sales] . . . was the claimed
combination”); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12
(Fed. Cir. 2006) (requiring a “nexus between the claimed invention and the
commercial success”); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)
(“proof that the sales [of the product] were a direct result of the unique
characteristics of the claimed invention—as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter”).
Here, Appellant has done little more than submit evidence of grass-
fed beef sales. Lebovich II ¶ 20, Ex. B2. However substantial those sales,
that evidence does not reveal in any way that the driving force behind those
sales was the claimed packaged food assembly. There is also no evidence
that increased sales of PRE Brands meat products occurring after October
2016 were not attributable to better marketing of the product, resulting from
redesigning the graphics on the packaging with the aid of the brand design
firm Ciulla. Lebovich II, Ex. B2. Nor is there evidence that sales of PRE
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Brands meat products were not merely attributable to the source of the meat
product and the high quality standards. Specifically:
PRE’s beef products are sourced from Australia and New
Zealand, where conditions and practices allow them to grow the
best grass year-round. The company’s suppliers are also held to
some of the highest quality standards, including 100% grass-
fed, 100% pasture-raised, and no added hormones or
antibiotics. All PRE’s steaks are hand-trimmed for consistent
thickness and weight, and products must meet the company’s
specified marbling scale, fat color, pH level, and meat color to
be considered PRE.
Lebovich II, Ex. B2.
Appellant has not directed us to evidence that establishes the quality
standards of the other manufactures of grass-fed beef that are included in
Exhibit B2.
As the Examiner observes, the objective evidence of nonobviousness
is directed to the sale of grass-fed beef, but the Specification is silent as to
the type of meat product used in claimed packaged food assembly, and the
apparently critical characteristic, grass-fed beef, is not recited in claim 1. See
Answer 11–12.
It is recognized that commercial success can be established by
showing significant sales of the product in a relevant market. J.T. Eaton, 106
F.3d at 1571. Nonetheless, Appellant contends the reliance on grass-fed beef
sales is appropriate because high-end, grass-fed beef is a staple good.
Appellant specifically states:
A POSA [person of ordinary skill in the art] would have
recognized both prior to 2013 and today that even high-end,
grass-fed beef is “generally viewed as a staple good in which
products compete on price.”’ (Ex. B, 2nd Lebovich Decl. ¶¶ 10-
11; Ex. C, Warner Del. ¶ 14.) This view would have been even
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more prevalent with other meats and perishable food products
generally. (Ex. B, 2nd Lebovich Decl. ¶ 10.)
Appeal Br. 16–17.
Appellant’s assertion that sales of high-end, grass-fed beef is not by
itself convincing because the number of sales without relevant market share
data does not establish commercial success.2 See, e.g., Huang, 100 F.3d at
140. Furthermore, Appellant has not identified evidence that establishes
“high-end, grass-fed beef” is a separate and distinct market sector from the
staple good meat and/or beef.3 Having considered all the submitted affidavit
testimony, I find Appellant’s objective evidence of nonobviousness is
insufficient to demonstrate that the alleged sales of PRE Brands high-end,
grass-fed beef were a direct result of the unique characteristics of the
claimed invention, and not a result of factors, such as improved marketing
and the source of the meat product that are unrelated to the subject matter of
claim 1. Consequently, Appellant has not produced sufficient evidence,
including persuasive fact, data, or analysis that links the asserted commercial
success to the limitations recited in claim 1.

2 Appellant has not identified the market share relative to the entire category
of beef products.
3 “Staple product: any product the consumption of which does not vary
much with changes in INCOME, for example, basic foodstuffs like potatoes
and bread. Staple products have an INCOME ELASTICITY OF DEMAND
of less than 1. This means that as incomes rise, proportionally less income is
spent on such products. Contrast LUXURY PRODUCTS.” The Free
Dictionary [Internet]. “staple product” Collins Dictionary of Economics, 4th
ed., C. Pass, B. Lowes, L. Davies, 2005 (27 Aug. 2020), https://financial-
dictionary.thefreedictionary.com/staple+product.
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Accordingly, Appellant has not established a sufficient nexus between
the merits of the claimed invention and the alleged commercial success.
Industry praise
Appellant contends the package design has received industry
recognition and praise. Appellant specifically states that
[t]he applicant provided evidence of industry praise
demonstrating recognition of the unique packaging. In April
2017, TrendHunter.com recognized the packaging for using
transparent components to a greater extent than prior products,
commenting that “[w]hat makes the package design particularly
noteworthy is that the plastic piece can be flipped up so that all
sides of the product may be viewed.” (Ex. B, 2nd Lebovich
Decl. ¶18.a; Ex. B1, TrendHunter.) TrendHunter.com further
noted that “[a]s well as being able to inspect a cut of meat from
all angles with this package, consumers will also find it useful
for freezing, as the paperboard backing can be removed via a
perforated tear line and recycled for additional space-saving in
the freezer.” (Id.) The novel package design also drew the
attention of Packaging World, which published an article on the
packaging in July 2017. (Ex. B, 2nd Lebovich Decl. ¶ 18.b; Ex.
B2, Packaging World.) Packaging World commented on the
customer appreciation of “100% transparency” and the
recyclable “backing card” removable “by a perforation in the
film at the edge of the header.” (Ex. B2, Packaging World.)
Furthermore, competitors recognize the novel packaging
benefits. “A major packaging company” contacted the applicant
about licensing, explaining “their interest is motivated by [the]
innovative packaging design.” (Ex. A, 1st Lebovich Decl. ¶ 21.)
Appeal Br. 28–29 (alterations in original).
Industry praise for an invention may provide evidence of
nonobviousness where the industry praise is linked to the claimed invention.
See Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294,
1305 (Fed. Cir. 2010); Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310,
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1316 (Fed. Cir. 2008). Appellant has not provided sufficient analysis
explaining how the article published in the TrendHunter Lifestyle section
(Lebovich II, Ex. B1) is representative of industry praise for the invention
recited in the claims. The article states “[s]ince transparency is of utmost
importan[ce] to today’s informed consumers, this package design makes it
possible for them to come to their own conclusions on the quality of the
premium product.” Lebovich II, Ex. B1 p. 2. Thus, the article appears to be
focused on influencing consumer purchasing and is not representative of the
packing industry. The article published in Packaging World (Lebovich II,
Ex. B2) represents an interview with the Chief Marketing Officer of PRE
Brands. This article is directed to extolling the high quality standards for
PRE Brands beef products and the new design of the flip packaging. In the
fall of 2016, the flip packaging was redesigned with the aid of the design
firm Ciulla. The article states:
Since being introduced in fall 2016, the product and
package have received praise from consumers and retailers
alike, says Sinclair: “Consumers love our new packaging
because it helps PRE stand out at shelf and also clearly
communicates how great it tastes, with the cutting board and
ingredients surrounding the beef. Retailers love it as well, as it
helps call attention to the category and boosts PRE sales.”
Lebovich II, Ex. B2 p.2.
Appellant has not provided sufficient analysis explaining how the
articles published in TrendHunter Lifestyle (Lebovich II, Ex. B1) and
Packaging World (Lebovich II, Ex. B2) are representative of packaging
industry praise for the invention recited in the claims which is commensurate
in scope with, and covered by, the claimed invention. See Bayer Healthcare
Pharm., Inc. v. Watson Pharm., Inc., 713 F.3d 1369, 1377 (Fed. Cir. 2013)
(finding that brief discussions of Patent Owner’s product in journal articles
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“fall well short of demonstrating true industry praise” and reasoning that
“industry praise of what was clearly rendered obvious by published
references is not a persuasive secondary consideration”).
Accordingly, Appellant has not established a sufficient nexus between
the merits of the claimed invention and the alleged industry praise.
Long-Felt Need and Failure of Others
Appellant submits that there has been a long felt need for the current
product. Appeal Br. 31–33. Appellant states:
The applicant presented evidence of a recognized
problem that has existed for a long period of time without
solution. The problem has existed since the development of the
modern field of packaged perishable items. For example, grass-
fed beef sellers that compete with the applicant have been
selling beef prior to the date of invention and, in some case, for
decades prior. (Ex. B, 2nd Lebovich Decl. ¶ 9.) Mr. Warner, a
food and beverage packaging designer with over 30 years of
experience in the field of industrial design explained that
disregard in the field for consumer-friendly features is common.
(Ex. C, Warner Decl. ¶¶ 12-13.) As further explained in Mr.
Lebovich’s second declaration, even today, other competitors in
the meat industry continue to use either polystyrene trays or
simple vacuum-sealed packages combined with stickers. (Ex.
B, 2nd Lebovich Decl. ¶ 7.) . . .
The claimed invention satisfies the identified long-felt,
unmet need. Such fulfillment is shown, for example, by sales,
growth in the market, customer testimonials, and industry
praise. (See, e.g., Section VII.C.1.) Mr. Warner explained that
the products embodying and reasonably commensurate with the
scope of the claims represent “a complete change in the focus
for packaging.” (Ex. C, Warner Decl. ¶ 14.) Competitors failed
to fulfill such a need, providing only “minimal effort to develop
unique brands or consumer-friendly features because low price
and cost of goods is expected to drive sales.” (Ex. C, Warner
Decl. ¶ 13.) The applicant’s packaging puts consumers’ interest
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ahead of cost, using a large backer card to provide more product
information combined with a perforated, transparent, and
vacuum-sealed portion that permits 360° viewing. (Ex. C,
Warner Decl. ¶¶ 14-16.)
Appeal Br. 32–33.
Establishing a long-felt need requires objective evidence showing
existence of a persistent problem recognized by those of ordinary skill in the
art for which a solution was not known. In re Gershon, 372 F.2d 535, 538–
39 (CCPA 1967); see also Monarch Knitting Mach. Corp. v. Sulzer Morat
GmbH, 139 F.3d 877, 884 (Fed. Cir. 1998) (“The relevant secondary
consideration is ‘long-felt but unsolved need,’ not long-felt need in
isolation.” (emphasis omitted)). This can be shown, e.g., by evidence
showing unsuccessful efforts to solve the problem. See Orthopedic Equip.
Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1382 (Fed. Cir. 1983)
(Although the claimed invention achieved the desirable result, there was no
evidence of any prior unsuccessful attempts to do so.). The failure to solve a
long-felt need may be due to factors such as lack of interest or lack of
appreciation of an invention’s potential or marketability rather than want of
technical know-how. Scully Signal Co. v. Elecs. Corp. of Am., 570 F.2d 355,
361 (Fed. Cir. 1977).
Appellant’s contentions of a long felt need are not substantiated by
persuasive and objective evidence. Appellant has failed to direct us to
evidence that those of ordinary skill in the art recognized a problem and
were searching for a solution. The identification of the 3 types of packaging
that were typically used for grass-fed beef does not indicate that there was a
persistent problem that needed to be resolved. Warner Decl. ¶ 12, Ex. C1.
Appellant does not direct us to other evidence discussing problems with
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existing packaging or acknowledging that Appellant’s packaging solves
long-felt problems with food packaging.
Accordingly, Appellant has not established a sufficient nexus between
the merits of the claimed invention and the alleged long-felt need and failure
of others.
Unexpected Results
Appellant alleges the Warner Declaration establishes evidence of
unexpected results. See Appeal Br. 34–36. In particular, Appellant argues
that the novel product design “surprisingly ‘allows for the development of
brand loyalty beyond what is typical for a staple food like a perishable food
item, and particularly [for] meat.’” Id. at 34 (quoting Warner Decl. ¶ 16).
Appellant argues that the claimed design “surprisingly allows for an
increased amount of visual graphic area without compromising product
visibility.” Id. (citing Warner Decl. ¶¶ 17–20). Appellant further argues that
products embodying and reasonably commensurate with the scope of the
claims “surprisingly allow for improved display options in grocery stores
over prior packaging.” Appeal Br. 35 (citing Warner Decl. ¶ 15).
Appellant’s evidence that they have achieved some degree of
consumer loyalty and brand awareness is mere opinion testimony that fails
to establish unexpected results. Although, Appellant has not produced test
data to support Mr. Warner’s opinions, this does not mean that his opinions
have no probative value. However, absent objective experimental data
substantiating the purported unexpected results, the Warner Declaration does
not constitute probative evidence of nonobviousness in the form of
unexpected results. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(“an applicant relying on comparative tests to rebut a prima facie case of
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obviousness must compare his claimed invention to the closest prior art;”
where appellant failed to present any experimental data, appellant’s
assertions of unexpected results constituted mere argument, which cannot
establish patentability). Moreover, the opinions and testimony of customers
cited in the declaration do not adequately establish the elements of the
claimed invention that are the basis of their opinion relative to the cited prior
art.
Accordingly, Appellant has not established a sufficient nexus between
the merits of the claimed invention and the alleged unexpected results.
Conclusion regarding obviousness
When, as here, an Appellant presents objective evidence of
nonobviousness, the presumption of unpatentability created by the
Examiner’s identification of a prima facie case of obviousness dissolves, and
all of the evidence must be weighed together to reach a final conclusion
regarding the obviousness of the claim in question. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[P]atentability is determined on the totality of
the record, by a preponderance of evidence with due consideration to
persuasiveness of argument.” Id.
As discussed above, the Examiner did not err in rejecting claims 1–4,
8–15, 21, and 24–30 under 35 U.S.C. § 103 as specified in Rejections 1–4.
Having reconsidered the issue of obviousness anew, carefully
evaluating and weighing both the evidence the Examiner relied upon
together with the objective evidence of non-obviousness in the form of
commercial success, industry praise, satisfaction of a long-felt, unmet need,
and unexpected results Appellant provided, on balance, a preponderance of
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the evidence supports the Examiner’s obviousness determination. I therefore
dissent.