Court doesn't waffle in decision to deny a food-based design patent in case that hinged on a seven-year-old video of a guy eating a Dunkin' Donuts breakfast sandwich

A federal appeals court has upheld the denial of a design patent to two inventors for a waffle that's flat on the bottom, concluding there was proof somebody had already come up with that idea: A review some guy posted on YouTube of the Dunkin' Donuts Belgian Waffle Sandwich - which he hated.

In 2016, Justin Samuels and Samuel Rockwell, two New Jersey friends with a fluffy dream, applied for a patent for the design of what they said was a new kind of Belgian waffle: Party on the top, in the form of a traditional grilled waffle shape, business on the bottom, in the form of being flat, or as they formally called it: "Waffle Having a Waffle Pattern Side and a Smooth Side."

But an examiner in the US Patent Office rejected their application, saying there was "prior art," that is, somebody else had already used the idea for a product. His proof: A YouTube review, by somebody who goes by the name The Endorsement, of a Dunkin' Donuts breakfast sandwich featuring bacon, egg and cheese sandwiched between two waffles, each of which had a traditional waffle shape on the top, and a flat bottom. That review went online two weeks before Samuels and Rockwell filed their application.

Samuels and Rockwell appealed, arguing "a single fuzzy frame in the sole prior art amateur video product review of a sandwich product purportedly depicting a single sided waffle as a component of the sandwich being reviewed" was no basis for denying their idea, and warning that the decision would have a dangerous ripple effect across the nation's food-based designs, "depriving inventors of the fruits of their labors without cause."

The Patent Trial and Appeal Board, however, battered the appeal and upheld the examiner's ruling, saying there were, in fact, several fuzzy views showing the Dunk's sandwich employed the same basic design as the one in the patent application.

Samuels and Rockwell appealed again. In its ruling yesterday, the US Court of Appeals for the Federal Circuit upheld the denials, agreeing with the trial and appeal board that as fuzzy as the brief views of the flat-bottomed Belgian-like products in the review might be, when you bite right into it, the video still shows a waffle with a waffle top and a flat bottom.

The Board considered as a whole both the claimed waffle and the prior-art waffle, comparing their outer surfaces, inner surfaces, and side views. The Board found that, contrary to what appellants alleged, the Belgian Waffle Sandwich Video discloses that the prior-art waffle has a flat inner surface, identifying (1) a side view of the waffle sandwich suggesting the inner surface of the waffle is flat, (2) another view showing that the egg filling of the waffle sandwich is flat and thus suggesting that the inner surface of the waffle is flat, and (3) yet another view showing a partially open waffle sandwich with a flat inner surface of the waffle visible.

The judicial record does not explain how the patent examiner came to see the Dunk's waffle-sandwich review in the first place, nor does it delve into the contents of that review, in which The Endorsement expresses serious disdain for the sandwich, because it fell apart in his hands and basically had no taste:

You're going to need some ketchup, or you going to need some salt and pepper, or you're going to need some accoutrements.

The complete review:

Via Suffolk University Law School Professor Sarah Burstein, who specializes in patent and design law.

Complete ruling (191k PDF).
Complete appeal (6.3M PDF).