Appeal No. 2006-0295
Application 10/053,926
choose judiciously from a large group of possible complexing agents in order to select “fluidity
sago starch” from the small group of fluidity corn starch and fluidity sago starch resulting from
the conversion, and even from among the small group of eight starches, taught to be converted to
fluidity starches, relied on by the examiner. See Sivaramakrishnan, 673 F.2d at 213 USPQ 441;
Schaumann, 572 F.2d at 316-17, 197 USPQ at 9-10; Petering, 301 F.2d at 681-82, 133 USPQ at
279-80.
However, we agree with appellants that the examiner has not established as a matter of
fact that one skilled in the art would have found the mere disclosure of the table listing water
fluidity values from 10-85 used in connection with the Thomas Rotational Shear-Type
Viscometer taken from a description in another United States Patent by Eden (col. 8, l. 28, to
col. 9, l. 13) to constitute a description of a sago starch having a WF in the claimed range or of
the claimed range. Thus, the claimed sago starch of appealed claims 9 and 19 is not identically
described in Eden within the meaning of § 102(b). See Titanium Metals, 778 F.2d at 781,
227 USPQ at 778.
Accordingly, in the absence of an established prima facie case of anticipation, we reverse
the sole ground of rejection of claims 9 and 19 under 35 U.S.C. § 102(b).
Pursuant to 37 CFR § 41.50(b) (2005), we enter a new ground of rejection of claims 9
through 15 and 19 through 25 under 35 U.S.C. § 103(a) as unpatentable over Eden, and a new
ground of rejection of claims 9, 16, 17, 19, 26 and 27 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Eden, Jeffcoat, Park and Yuan. These grounds of rejection are
appropriate even though we reversed the ground of rejection under § 102(b). This is because
Eden can be applied “as evidence of obviousness under § 103 for all it fairly suggests to one of
ordinary skill in the art.” See In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA
1973).
We find that Eden would have disclosed to one of ordinary skill in this art a method of
preparing cast jelly gum confections which can contain a converted starch other than a high
amylose starch, such as “e.g., fluidity corn or sago starches,” wherein “[c]onverted starches,
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
- 9 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007