It is not often that three of one’s passions come together, but a recent PTAB decision has done just that. The invention relates to a “capacitive musical instrument that is provided with a food object and generates various sounds when a user touches components/ingredients of the food object.” While that may not sound like lightning in a bottle, just check out this video. The invention, by Hard Rock Cafe, is really about an electric guitar that accepts a real burger and allows the user to play electric guitar by touching different parts of the burger.
Now that your attention is fully captured, let’s review the legal aspects of the case.
The application (U.S. App. No. 16/891,942) was rejected on three grounds—enablement, written description, and indefiniteness—and all of them were reversed by the PTAB. What makes this decision particularly interesting is not just the idea of an edible burger-powered electric guitar solo, but the way in which the Examiner wove together a trio of non-prior-art rejections, seemingly in the absence of a solid prior art basis. It’s a good case study of how an examiner strings together multiple related non-prior art rejections, all without any real basis.
The Examiner rejected the claims under §112(a), arguing that the invention required undue experimentation and that there was little to no guidance in the specification. But the Board found this assertion lacked any real evidentiary support. The Appellant had provided specific examples of how to attach conductive clips or wires to food items, and the Board noted that one of ordinary skill in the art would know how to select suitable conductive materials without undue experimentation. So, when you are facing an unsupported assertion of undue experimentation, push back and require more than mere hand-waving. Focus on the Wands factor and how the examiner’s remarks are no more than conclusory remarks about unpredictability or the lack of known examples.
Strangely, the Examiner also alleged that the phrase “at least one of the ingredients of the food object being a conductive food item” was an unsupported negative limitation, arguing that the claims required it be “only” a conductive food item. But the Board quickly dismissed this argument—the claim doesn’t exclude non-conductive food items; it simply requires at least one to be conductive. Again, do not let an examiner mischaracterize a limitation as negative when it clear is not.
Finally, the indefiniteness rejection fell flat. The Examiner argued it was unclear how the capacitive signal would be sent through the food item. But again, the rejection boiled down to questions of feasibility, not claim clarity. As the Board noted, the rejection read more like an enablement argument dressed up as indefiniteness, and so was easily dismissed by the Board.
This case is more than just a novelty. It’s a reminder of what can happen when an examiner doesn’t have a solid prior art basis and instead reaches for a patchwork of §112 rejections. That can sometimes work—but only when grounded in real evidence and careful analysis.
Now it is time to enjoy a burger and play some electric guitar!