Appeal No. 2005-1598
Application 10/103,162
welter of unfixed variables.”); see also In re Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697
(CCPA 1966). Furthermore, the evidence in the specification and the declaration at 32°F does
not address the range of fluidity permitted by claim 67 which includes dipping the warmed
product into a composition at room temperature, including 77°F, as we interpreted this claim
above.
On this record, we further find that while the evidence establishes that a relatively soft
dough product is easily dipped and coated in the first inventive composition containing glycerin
but not in the composition representing Scherwitz which contains no glycerin, the evidence is
not commensurate in scope with the claims. We find that while the composition used to
represent the teachings of Scherwitz does fall within the teachings of the reference, the
Scherwitz Example icing composition is in fact the closest prior art to each of claims 37, 53, 64
and 67, which composition was not compared, and indeed, it reasonably appears from the
reported performance of this composition in the Scherwitz Example, that the same would
perform in similar manner to the tested inventive compositions. This, of course, points to the
difference between the claimed topping composition and the icing composition of the Scherwitz
Example, which is the presence of the humectants glycerin and invertose, respectively. In view
of this and additional differences in the weight percent of other ingredients, we find no evidence
or scientific explanation establishing that the results reported for the tested composition
representing Scherwitz alone and vis-à-vis the tested inventive compositions would obtain with
respect to the icing composition of the Scherwitz Example. See, e.g., In re Kulling, 897 F.2d
1147, 1149-50, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990) (objective evidence directed to optional
embodiments); In re Clemens, 622 F.2d 1029, 1035-36, 206 USPQ 289, 295-96 (CCPA
1980)(the temperature limitation was “very broad” and the “narrow range of data did not provide
a basis “for predicting the relative performance” of the claimed and prior art resins “at
temperatures at which the latter would be expected to perform well”); Lindner, 57 F.2d at 508,
173 USPQ at 358 (“The claims, however, are much broader in scope, covering mixtures of
numerous compounds, and . . . “there is no ‘adequate basis for reasonably concluding that the
great number and variety of compositions included by the claims would behave in the same
manner as the [single] test composition.”).
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