Appeal No. 95-2971
Application No. 07/742,260
Claims 11-13:
Claims 11-13 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Hara (I), Hara (II) and Sugiyama in view of Shimizu, Gaffar, Fuller, Yamada and Koyama.
A patentability determination must begin with the scope of the claims being
ascertained. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68, 1 USPQ2d
1593, 1597 (Fed. Cir.), cert denied, 481 U.S. 1052 (1987). (“Analysis begins with a key
legal question--what is the invention claimed?”). In similar fashion, the court stated in In re
Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970), "[t]he first inquiry must be
into exactly what the claims define." The examiner's rejection of these claims is fatally
defective since it does not properly account for and establish the obviousness of the
subject matter as a whole.
Claim 11 requires, in pertinent part, the contacting of the crude konjac sol with an
extraction salt selected from one or more of dicalcium phosphate, calcium phosphate,
magnesium phosphate and aluminum sulfate prior to precipitation and removal of insoluble
impurities, formation of a coagulate by treating the resulting sol with isopropyl alcohol and
the removal and drying of the coagulate. The examiner points to no reference which
discloses the contacting of a crude konjac sol with one of the extraction salts of claim 11.
The examiner's reliance on newly cited Fuller, Yamada, Gaffar, and Koyama to equate the
claim designated phosphate and sulfate salts with the inorganic salts of Hara I and Hara II
is misplaced. These references relate to processes and products which are unrelated to
the purification or treatment of konjac and are of no value in establishing the equivalency of
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