Appeal No. 2005-1598
Application 10/103,162
We further find that the Scherwitz Example composition differs from the specified
topping compositions of product claim 64 and of method claim 67 solely in that it contains
invertose instead of glycerin, both humectants and thus, water activity reducing agents, as the
amounts of fat, sugar as flavoring, water, high fructose corn sweetener, and the water activity
reducing agent in the Scherwitz Example composition fall within the weight percent ranges
specified in the claims. We agree with the examiner that one of ordinary skill in this art armed
with the knowledge in this art with respect to humectants, would have modified the compositions
of Scherwitz, including the composition of the Example, by using other known humectants,
including glycerin, with and in place of the humectants used by the reference in following the
teachings of the reference in the reasonable expectation of obtaining an icing composition having
the properties taught by the reference. See generally, B.F. Goodrich Co. v. Aircraft Braking Sys.
Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When obviousness is
based on a particular prior art reference, there must be a showing of a suggestion or motivation
to modify the teachings of that reference. [Citation omitted.] This suggestion or motivation need
not be expressly stated. [Citation omitted.]”).
Thus, based on this evidence, we determined that one of ordinary skill in this art
routinely following the teachings of Scherwitz would have reasonably arrived at the claimed
packaged food products and methods of preparing a food product using such packaged food
products encompassed by appealed claims 37, 53, 64 and 67, including each and every limitation
thereof arranged as required by the claims, without recourse to the disclosure in appellants’
specification. Therefore, the burden falls upon appellants to establish by effective argument or
objective evidence that the claimed products and methods encompassed by appealed claims 37,
53, 64 and 67 patentably distinguish over the packaged frozen food product taught in the
Scherwitz Example even though the rejection is based on § 103. Best, 562 F.2d at 1255-56, 195
USPQ at 433-34 (“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical processes, the PTO
can require an applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. See In re Ludtke, [441 F.2d 660, 169 USPQ
563 (CCPA 1971)]. Whether the rejection is based on ‘inherency’ under 35 USC 102, on ‘prima
facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same,
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