Appeal No. 2005-1598
Application 10/103,162
visual observation that the composition representing Scherwitz “was not of sufficiently low
viscosity and fluidity to be applied to a soft dough product by dipping” and in “attempting to dip
the dough product . . . the dough product would become deformed . . . [and] [t]he topping did not
flow and did not coat the dough product” (¶ 8.). On this basis, declarant Kittleson concludes that
Scherwitz “does not describe how to make a topping composition that is dippable as described
and claimed” (¶ 10.), and opines “that one of skill in the food topping art would not have found it
obvious to prepare a dippable topping formulation, as described and claimed” (¶ 11.).
We do not agree with appellants that the evidence in the specification and in the Kittleson
declaration establishes that the icing compositions of Scherwitz do not have “sufficient fluidity”
as claimed. Appellants have the burden to submit an explanation or evidence with respect to the
practical significance of the results shown vis-à-vis the teachings of Scherwitz and why the
results would have been considered unexpected. See generally, In re Geisler, 116 F.3d 1465,
1470, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Merck, 800 F.2d 1091, 1099, 231 USPQ
375, 381 (Fed. Cir. 1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52 (Fed. Cir.
1985); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); In re Klosak,
455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248,
169 USPQ 303, 306 (1971). This burden is not met by declarant’s opinion with respect to the
teachings of the entirety of Scherwitz based on a comparison which does not represent the sole
illustrative Example composition and the teachings presented in this respect, see Lindner,
457 F.2d at 508, 173 USPQ at 358 (“[M]ere conclusory statements in the specification and
affidavits are entitled to little weight when the Patent Office questions the efficacy of those
statements. [Citations omitted]”), and certainly with respect to the ultimate legal issue of
obviousness in this case, which is entitled to no weight. See In re Reuter, 651 F.2d 751, 759,
210 USPQ 249, 256 (CCPA 1981).
The significant differences between the first inventive composition and the composition
representing Scherwitz in the declaration and the specification are, respectively, 15.72 and 14.68
weight percent fat, although the ratios 0.3715:1 and 0.3713:1 are the same; 44.92 and 59.99
weight percent sugar (flavoring); 13.93 and 12.27 weight percent water; 9.91 and 3.25 weight
percent high fructose corn syrup (HFCS); 12.35 and 5.54 weight percent total corn syrup (HFCS
and corn syrup solids (CSS)); 5.00 and no weight percent glycerin; and 20.27 and 8.28 weight
- 17 -
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007