Appeal No. 2005-1598
Application 10/103,162
to the warmed “product” to any extent at or somewhat above 32°F, as we have interpreted these
limitations above. Indeed, claims 37 and 53 do not require that the “product” must be a
“relatively soft dough product” and that the topping composition “flows and coats the dough
product and adheres to the dough product, without damaging the product” at that temperature.
In these respects, we note the examiner’s finding that the viscosity reported for the comparative
composition representing Scherwitz falls within the viscosity range disclosed for the claimed
compositions at 32°F in the specification. We find no evidence that the same differences
between the inventive composition and the composition representing Scherwitz would not obtain
at room temperature, including 77°F.
Thus, on this record, in the absence of 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 in the context of the limitations of the appealed
claims, we find that the evidence fails to establish that the claimed packaged food product
containing a frozen food product and a packaged topping composition and the method of
preparing food product therefrom encompassed by claims 37 and 53 exclude a packaged food
product containing a frozen food product and a packaged topping composition and the method of
preparing a food product therefrom within the teachings of Scherwitz and the Scherwitz
Example.
With respect to appealed claim 63 and 67, which specifies weight percent ranges for the
composition ingredients, fat, sugar as flavoring, water, high fructose corn syrup and glycerin, as
the examiner finds, the weight percents of fat, sugar as flavoring, water, and high fructose corn
syrup in the composition representing Scherwitz fall within the claimed weight percent ranges
for these ingredients. Thus, the sole difference in the compositions should be the presence and
absence of glycerine. In view of the significant differences in the amounts of ingredients, the
practical significance of which has not been explained on the record, we find that the evidence
relied on by appellants does not establish a side-by-side comparison of the claimed and
Scherwitz compositions which reflects the actual difference in performance based on glycerin
alone. See In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483 (CCPA 1965) (“[W]e do not
feel it an unreasonable burden on appellants to require comparative examples relied on for non-
obviousness to be truly comparative. The cause and effect sought to be proven is lost here in the
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