Appeal No. 2006-3157
Application No. 10/417,608
wherein a surface of the dough composition browns normally during
baking.
Rejections on appeal
(1) Claims 1-25 are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter
which the applicant regards as the invention.1
(2) Claims 1-3, 5-13, and 16-22 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Banks et al.2
(3) Claims 4, 14, 15, and 27-29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Banks.
Grouping of claims
As for the rejection of claims 1-25 under 35 U.S.C. § 112, second paragraph, the
appellant argues the patentability of the claims as a group, focusing his arguments on
claim 1.3 Therefore, for purposes of this appeal, the patentability of claims 2-24 under 35
U.S.C. § 112, second paragraph, stands or falls with the patentability of claim 1.
As for the rejection of claims 1-3, 5-13, and 16-22 under 35 U.S.C. § 102(b), the
appellant argues the patentability of these claims as a group. Therefore, for purposes of
1 In the final Office action, the examiner explained that claims 1, 8, 9, 11, 12, 16, and 19-21 are indefinite.
Specifically, claims 1, 8, 16, and 21 were said to be indefinite for one reason, and claims 9, 11, 12, 19, and
20 were said to be indefinite for another reason. See final Office action dated March 21, 2005, pp. 2-3. In
the Answer, the examiner withdrew the rejection of claims 9, 11, 12, 19, and 20 under 35 U.S.C. § 112,
second paragraph. Answer, p. 3. However, claims 9, 11, and 12 are dependent on claim 1, and claims 19
and 20 are dependent on claim 16. Since claims 1 and 16 continue to be rejected under 35 U.S.C. § 112,
second paragraph, claims 9, 11, 12, 19, and 20 also continue to be rejected under 35 U.S.C. § 112, second
paragraph. See 37 CFR § 1.75(c) (2005) (“Claims in dependent form shall be construed to include all the
limitations of the claim incorporated by reference into the dependent claim.”).
2 U.S. Patent No. 4,828,853 granted on May 9, 1989 to Banks et al. (hereinafter “Banks).
3 The appellant notes that one of ordinary skill in the art would be able to ascertain the scope of claims 8,
16, and 21 for the same reasons that one of ordinary skill in the art would be able to ascertain the scope of
claim 1. Brief, p. 13.
2
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