Appeal No. 2006-3157
Application No. 10/417,608
distinction between bread and biscuit dough and cookie dough. According to the
appellant, bread and biscuit dough is relatively airy whereas cookie dough is relatively
dense. Brief, pp. 15-16.
The appellant has not directed us to any credible evidence which establishes how
one of ordinary skill in the art would have interpreted the term “biscuit” in the context of
claim 1. The appellant has also failed to direct us to any credible evidence which
discusses the alleged textural differences between bread and biscuit dough and cookie
dough. Therefore, the appellant’s arguments amount to nothing more than attorney
argument. See In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)
(arguments in the brief do not take the place of evidence in the record).
The examiner correctly points out that the claims do not recite any compositional
or structural feature that distinguishes a biscuit dough from a cookie dough. Answer, pp.
7-8. The specification also fails to make a distinction. See Specification, p. 25, lines 17-
18 (the inventive compositions can be used to prepare any type of dough compositions).
We find that in the baking art, the line between a biscuit and a cookie is not as bright as
the appellant would like us to draw. For example, we find that one of ordinary skill in the
art would have considered “biscotti” to be either a biscuit or a cookie. Thus, giving claim
1 its broadest reasonable interpretation consistent with the specification, it is reasonable
to interpret “biscuit” as including “cookie.” See In re Morris, 127 F.3d 1048, 1053-54,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (claims given “broadest reasonable
interpretation” during prosecution).
For the reasons set forth above, the rejection of claim 1 under 35 U.S.C. §102(b)
as being anticipated by Banks is affirmed.
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