Appeal No. 2006-0276
Application 10/144,463
brief and reply brief. See generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
As an initial matter, we interpret claim 21, on which the other appealed claims depend,
by giving the terms thereof the broadest reasonable interpretation in their ordinary usage in
context as they would be understood by one of ordinary skill in the art in light of the written
description in the specification, unless another meaning is intended by appellant as established in
the written description of the specification, and without reading into the claims any limitation or
particular embodiment disclosed in the specification. See, e.g., In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); In re Morris, 127 F.3d
1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989). The plain language of independent claim 21 encompasses
a product which is any device comprising at least any manner of rod-shaped eating utensil made
entirely of any manner of bread, such as a breadstick, wherein the breadstick has any manner of
integrally baked, randomly-disposed bread projections extending radially in all directions from
the sides thereof which provide the capability to “wind elongated pasta onto the” breadstick, and
the wound “elongated pasta and” the breadstick are capable of being “eaten simultaneously.”
Indeed, appealed claim 21 reads on a breadstick per se having any manner of “randomly-
disposed bread projections” on the surface thereof that provide the capabilities, to any extent, of
winding in any manner, any kind of elongated pasta and simultaneously eating the breadstick
with the pasta wound thereon. To the extent that the term “utensil” (reply brief, pages 1-2; see
below p. 5), the winding of the elongated pasta on the breadstick and eating the pasta-wound
breadstick are intended by appellant as “method or process of use” limitations on the breadstick,
such limitations have no place in a product claim. See In re Wiggins, 397 F.2d 356, 359 n.4,
158 USPQ 199, 201-02 n.4 (CCPA 1968), and cases cited therein (“[A]ppellant’s discovery of
the analgesic properties of ‘O2’ and of a composition containing it could properly be claimed
only as a method or process of using that compound or composition in accordance with the
provisions of 35 U.S.C. 100(b) and 101.”).
The examiner finds that neither Hayes nor Wellman report the surface characteristics of
the breadstick used as an eating utensil to wind the elongated pasta and then eat the pasta-wound
breadstick (answer, pages 3-4). Appellant submits that “it is safe to assume that merely a
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