Editor’s Note: José Cortina is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A.

On April 6, 2005, the Federal Court of Appeals heard the case of In re Kretchman, that involved an attempt by the J.M. Smucker Company to obtain broader patent protection for its “Uncrustables” peanut butter and jelly sandwich product. The broader protection sought was to cover its process of manufacturing the sandwiches. On April 8, 2005, the court rejected the effort, affirming the Patent Office decision that broad protection for the method of making the peanut butter and jelly sandwiches, even if crustless, is unavailable.

A review of the fundamental concepts and history leading to this case helps us to understand why a detailed analysis of all the facts is important before attempting to conclude the validity of a patent or of any of its claims.

In 1999, the Smucker Company was issued U.S. Patent No. 6,004,596 broadly covering a sealed crustless sandwich. The Smucker’s commercial product corresponding to the original issued patent is its “Uncrustables” line of products which are generally circular-shaped peanut butter and jelly sandwiches having crimped edges and no crust. That patent in its originally-issued form has come under much criticism over the years by many patent pundits.

While many have criticized the issuance of the original patent, and Smucker’s attempt to obtain broader claims, what is evident throughout the reported criticism is that few, if any critics are willing to look at and analyze what it was that Smuckers was actually awarded. This is because few critics are willing to take the time to critically review the claims of the patent, which is what actually defines the scope of the invention Smuckers is entitled to protect. While the Federal Circuit agreed with the rejection of Smucker’s attempt to seek broader protection by affirming the Patent Office decision, it is not as clear that the criticism of the originally issued patent is warranted.

A closer analysis of the claims in the originally issued U.S. Patent No. 6,004,596 reveals that its broadest claim calls for a sealed crustless sandwich having a first bread layer, one filling, a second bread layer, with the two bread layers crimped for sealing and with the crust being removed. Although the claim calls for only one filling (What, no jelly?), the use of the term “comprising” in the claim allows for that claim to cover products with two fillings (There’s the jelly). While one can argue in hindsight after knowledge of what was awarded that such an invention is obvious, and that a patent with such a claim should not have been awarded, closer examination of other claims in the patent suggests that there may be an invention described in the patent and that perhaps at least some of the claims were properly awarded. Keep in mind that this patent is still in force.

More specifically, Claim 3 of the patent calls for the crimped edge being a finite distance from the filling for increasing the bond, certainly something Mom is not thinking about when making a peanut butter and jelly sandwich with no crust at home. Mom typically cuts off the crust as close to its edge as possible to avoid wasting bread and filling. Claim 6 further calls for three fillings, specifically outer first and third fillings which are presumably peanut butter, and a second filling between the first and third fillings, which is presumably jelly. The first filling is located adjacent the first bread layer and the third filling is located adjacent the second bread layer. The outer edges of the first filling and the third filling are engaged with each other to form a reservoir for retaining the second filling between the first and third fillings, in effect creating a “pouch.” In this manner, the jelly does not leak out from the “pouch” formed by the peanut butter, and does not deteriorate the bread layers, particularly when stored over time on store shelves.

Thus, even though Smucker’s attempt to obtain broader claims was rejected in the decision of the Federal Circuit, and Claim 1 may be held invalid in any challenge to the patent, there are other aspects of the invention recited in the claims of the originally issued patent which may merit greater scrutiny and a conclusion that they were properly awarded.

The lesson in all of this is that when patents are awarded for simple inventions, it is easy without a detailed analysis of the facts to criticize the actions of the U.S. Patent Office in broad general statements while sensationalizing the issue in the press. In this case, recognized patent experts have been quoted in the press in criticizing the issuance of the patent and the attempt to obtain broader claims. On the other hand, such experts have openly acknowledged that they had not read the claims, a critical omission in voicing their opinions.

What is important to remember is that in the case of patents, the primary thing that matters is the claims because that is what defines the metes and bounds of the invention. Although the decision in the Kretchman case may suggest such criticism is valid, the above discussion of certain key features of the claims of the Smucker’s issued patent is an example of how the lack of critical and detailed analysis can be used to justify press “buzz” over what is often a very fact specific issue. Obviously the Patent Office thought enough of the original application to have awarded a patent while taking a hard line on Smucker’s attempts to broaden the protection. This suggests the Patent Office is not making as many poor decisions as the pundits suggest. What is clear is that such issues cannot be properly analyzed and commented on without a critical review of those facts, and comments without a critical analysis of the claims should be viewed with skepticism.

Daniels Daniels & Verdonik, P.A. has been serving the legal needs of entrepreneurial and high technology clients for more than 20 years. A. José Cortina is a registered patent attorney who focuses his practice on the intellectual property needs of small to large technology companies, including providing patent, trademark, copyright, counseling, licensing, conflict resolution and transactional services. He is experienced in a broad range of technologies, including electronics, communications, computer hardware and software, biomedical, materials, and selected chemical and chemical engineering technologies. Comments can be sent to jcortina@d2vlaw.com