Ex Parte Bedi et al - Page 19


              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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