Appeal No. 2005-1598
Application 10/103,162
the “dipped” and “adhering” limitations. Thus, the claim limitations do not reasonably appear to
distinguish the claimed topping compositions from the icing compositions having the properties
of “substantially temperature independent viscosity” and “pliable and spreadable” with “good
cling” to the warmed dough product disclosed by Scherwitz and evinced in the reference
Example by the testing of an icing composition after storage at 0° F with the reported results.
Indeed, we find that the icing compositions having the properties taught by the reference
reasonably appear to necessarily inherently permit the warmed dough product to be dipped
therein so as to adhere thereto at and somewhat over 32°F and at room temperature, including
77°F, at least to the extent claimed even though the reference is silent with respect to this method
of applying the icing composition to the dough product. See In re Skoner, 517 F.2d 947, 950-51,
186 USPQ 80, 82-83 (CCPA 1975) (“Appellants have chosen to describe their invention in terms
of certain physical characteristics . . . . Merely choosing to describe their invention in this
manner does not render patentable their method which is clearly obvious in view of [the
reference]. [Citation omitted.]”).
With respect to the separately argued claims, we find that the icing compositions of
Scherwitz reasonably appear to fall within the topping compositions encompassed by product
claim 37 and method claim 53, neither of which specifies the ingredients of the topping
composition. See generally, Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807,
10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989) (“That the ‘813 patent discloses a multitude of
effective combinations does not render any particular formulation less obvious. This is especially
true because the claimed composition is used for the identical purpose. [Citations omitted.]”).
Indeed, the packaged food product comprising a frozen food product and a topping composition
and the preparation of a food product therefrom disclosed in the Scherwitz Example reasonably
appears to be identical to the claimed packaged frozen food product and the method of preparing
a food product therewith encompassed by appealed claims 37 and 53. See generally, In re
Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990); In re Best, 562 F.2d
1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977).
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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