Appeal No. 2006-3157
Application No. 10/417,608
Discussion
A. Rejection under 35 U.S.C. § 112, second paragraph
Claims 1-25 are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter
which the applicant regards as the invention. Specifically, the examiner explains (final
Office action mailed March 21, 2005, p. 2):
[Claim 1] is contradicting because it recites that the interior dough does
not brown normally and yet the surface browns normally; however, there
is no distinct structural difference between the interior dough and the
surface of the dough composition. The dough composition comprises the
interior dough; thus, the surface is part of the interior dough.
The appellant argues (Brief, p. 11):
[C]laim 1 does make a structural distinction between the interior dough
and a surface of the dough composition because claim 1 expressly recites
an “interior dough” and a “surface of the dough composition.” In other
words, the phrases “interior dough” and “surface of a dough composition”
are distinct structural features of a dough that refer to different structural
portions of a dough composition. The interior dough refers to the interior
region of a dough composition. A surface of the dough composition refers
to an exterior surface of the dough composition. [Underlining in original
omitted.]
We disagree. Contrary to the appellant’s arguments, claim 1 does not specify that
the “surface” at issue is the exterior surface of the dough composition. Rather, as the
examiner explains, it is reasonable to interpret “a surface of the dough composition” as a
surface of the interior dough. For this reason, the rejection of claim 1 under 35 U.S.C.
§ 112, second paragraph, is affirmed.4
4 The examiner also argues that the specification discloses a dual dough structure in which there is an inner
dough wrapped in an outer dough and concludes that claim 1 is incomplete for omitting an essential
element. See final Office action mailed March 21, 2005, p. 2. The appellant correctly points out that the
(continued. . .)
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