Appeal No. 2005-1598
Application 10/103,162
into the Scherwitz composition” (id.). The examiner further finds that the evidence in the
specification, and thus also in the Kittleson declaration which involves the same composition, is
not commensurate in scope with the claims because there is no specifically claimed composition
which corresponds to the ingredients of the tested compositions, including dextrose and other
ingredients (id., page 9).
We find substantial evidence in Scherwitz supporting the examiner’s position. We
determine that Scherwitz would have taught to one of ordinary skill in the culinary arts the
“critical” ingredients in the “critical” amounts along with other ingredients required to obtain
icing compositions having the properties taught in the reference and applied to a warm dough
product. Scherwitz would have taught that additional ingredients can be used in the icing
compositions, as illustrated by the icing composition of the Example which was “stored at 0° F”
and “[t]hereafter . . . placed upon a warm raised donut for evaluation.” Thus, Scherwitz would
have reasonably taught that the disclosed icing compositions have “a substantially temperature
independent viscosity” so as to be “pliable and spreadable” to warmed dough products at
“freezing conditions,” including 0° F, and at “room temperature,” including 77° F, with “good
cling to the underlying bakery product.”7
We recognize that Scherwitz would not have specifically disclosed that the icing
compositions are “sufficiently fluid” at and somewhat over 32°F and at room temperature,
including 77°F, such that the dough product is “dippable” therein with the composition
“adhering” to the product to the extent required by appealed claims 37, 53, 64 and 67, as we
have interpreted them above. We agree with the examiner that the application of a topping
composition to a warmed dough food product or any other food product by dipping would have
been merely an obvious alternative to the application by spreading the composition on the food
product to the ordinary consumer, as appellants disclose (specification, page 17, ll. 16-19). As
the examiner points out and we determined above, the claim limitations do not present a specific
measure of the property of “sufficiently fluid” of the claimed topping compositions other than
7 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
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