Appeal No. 1999-0674
Application No. 08/654,536
have been ample motivation for one of ordinary skill in the art to provide a bread product with a
toroidal shape. In any case, since a toroidal bread product solves no stated problem and has
no unexpected result in appellant’s invention, the use of one shape or the other would have been
an obvious matter of design choice. See In re Kuhle, 526 F.2d at 555, 188 USPQ at 9. As a
result, the recitation in claim 23 that the product has a toroidal shape does not patentably
distinguish the subject matter of claim 23 over the prior art.
As discussed supra, the only reasonable interpretation of the language in claim 23 is that
the recitation of “the other end” refers to the end of the channel opposite from the opening in the
outer surface. Given this interpretation, the language in claim 23 is broad enough to read on a
channel of any length. As such, the limitation concerning the length of the channel in claim 23 is
broad enough to read on any channel length.
The Hayachi patent is silent as to the particular type of bread product to be filled by the
Hayachi apparatus. Thus, the appealed product claims admittedly differ from the Hayachi
bread product by specifically reciting that the bread product is a bagel product. However,
Burger suggests the concept of injecting cream cheese into a bagel product to eliminate the need
for slicing. Such a teaching would have been ample motivation to utilize bagel dough in
preparing the bread product in the Hayachi patent. In any case, as previously discussed, since
the selection of bagel dough is not stated in appellant’s specification to solve any particular
problem or to have any unexpected result, the selection of one type of bread dough over the
other would have been an obvious matter of choice. Therefore, the recitation of a bagel
product does not serve to patentably distinguish appellant’s claimed invention over the prior art.
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