Appeal No. 2005-1598
Application 10/103,162
and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products. [Footnote and citation omitted.]”); Skoner, 517 F.2d at 950-51, 186
USPQ 80, 82-83; cf. Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58 (Fed. Cir. 1990) (“The
Board held that the compositions claimed by Spada ‘appear to be identical’ to those described by
Smith. While Spada criticizes the usage of the word ‘appear’, we think that it was reasonable for
the PTO to infer that the polymerization by both Smith and Spada of identical monomers,
employing the same or similar polymerization techniques, would produce polymers having the
identical composition.”).
Furthermore, while the issue here has been framed by the examiner as one of obviousness
under § 103(a), because it reasonably appears that the packaged frozen food product containing
the icing composition disclosed and tested in the Scherwitz Example falls within appealed claims
37 and 53, such evidence establishes a lack of novelty of the claimed invention as encompassed
by the appealed claims that is, of course, “the ultimate of obviousness.” In re Fracalossi,
681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982) Thus, to the extent that the packaged
frozen food product containing the icing composition disclosed and tested in the Scherwitz
Example anticipates the claimed packaged frozen food product encompassed by appealed claims
37 and 53, the case of obviousness cannot be rebutted by evidence. Fracalossi, 681 F.2d at 794,
215 USPQ at 571.
We agree with the examiner that appellants have not carried their burden of patentably
distinguishing Scherwitz. We do not agree with appellants contention that the compositions of
Scherwitz are not necessarily formed of the same ingredients in the same amounts disclosed in
the specification and specified in the claims. No ingredients are specified for the topping
compositions of claims 37 and 53, and we find no basis in either of these claims or in the written
description in the specification to read any limitation(s) respecting the presence of specific
ingredients in particular amounts into these claims. The ingredients of the claimed topping
compositions are specified only in claims 64 and 67, and the sole ingredient encompassed by
these compositions that is not taught by Scherwitz is glycerin. This is because both the
specifically claimed compositions and those of Scherwitz each have the same fat, flavoring and
water ingredients in the same weight percent ranges disclosed by Scherwitz and specified in the
claims to be “critical,” and, as the examiner finds, Scherwitz discloses that high fructose corn
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