Appeal No. 2006-3157
Application No. 10/417,608
The patentability of claims 2-24 stands or falls with the patentability of claim 1.
Therefore, the rejection of claims 2-24 under 35 U.S.C. § 112, second paragraph, is also
affirmed.
B. Rejection under 35 U.S.C. § 102(b)
Claims 1-3, 5-13, and 16-22 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Banks.
The examiner explains the prima facie case of anticipation as follows (final Office
action mailed March 21, 2005, p. 4):
. . . Banks et al disclose a dough composition having the same
structure and containing the same ingredients as claimed. The outer dough
is the same as the surface of the dough composition. The outer dough
contains conventional leavening agents which mean the agents are not
encapsulated. The same agent is used for the dough surface as disclosed
in the specification. Since the Banks et al dough is the same as the dough
claimed, it is inherent the dough composition will have the properties such
as refrigerator stability, browning characteristic . . . as claimed. The new
limitation of a bread or biscuit dough does not define over Banks et al.
The claims do not define what constitutes a biscuit dough. Biscuit, as
defined in the Webster’s 11 New Riverside University Dictionary, means
“a cookie”. The Banks et al dough is a cookie dough.
The appellant argues that Banks does not anticipate the claimed invention because
Banks does not teach a bread or biscuit dough. The appellant points to The American
Heritage College Dictionary which is said to define biscuit as a “Chiefly British” term for
cookie.5 The appellant argues that a British lay person may refer to a cookie as a biscuit,
but the average American lay person does not. The appellant also attempts to draw a
(. . . continued )
exterior surface is not limited to this embodiment but may also include a basic agent topically applied to the
surface of the interior dough. Specification, p. 17, lines 18-24. Therefore, we agree with the appellant that
claim 1 does not omit an essential element.
5 A copy of the portion of The American Heritage College Dictionary relied on by the appellant has not
been provided with the brief.
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