Ex Parte NAGGI et al - Page 6




                 Appeal No. 2002-1356                                                                                                             
                 Application No. 09/206,063                                                                                                       
                 aqueous solutions of alkali, containing sodium borohydride.  The borohydride converts                                            
                 the reducing end groups of the polysaccharides to a hydroxymethyl group, and this                                                
                 decreases the incidence of alkaline degradation.  Although the " 1,4 starch is not                                               
                 specifically mentioned, the selective agent target for reduction is the hydroxyl group for                                       
                 which NaBH4  is highly selective for.” (Emphasis added.)  Answer, page 4.  The                                                   
                 examiner concludes (Answer, page 4) in view of the teachings of the cited references, it                                         
                 would have been prima facie obvious to use NaBH4 to reduce a starch.  Id.                                                        


                 Claim 11                                                                                                                         
                         Claim 11 is directed to a method of preparing a stabilized osmotic agent                                                 
                 comprising the following steps: providing a solution of starch dissolved in water;                                               
                 providing a solution of NaOCl; and adding the NaOCl solution to the starch solution to                                           
                 oxidize the starch.                                                                                                              
                         The examiner relies on Horn for the teaching that oxidation of starch                                                    
                 (maltodextrin) leads to a starch product which is more easily solubilized and which                                              
                 exhibits a lower viscosity when solubilized in water and that oxidation may be carried                                           
                 out by utilizing any of a number of oxidizing agents which are synonymous with                                                   
                 bleaching agents such as perborates, periodic acid, persulfates and hypochlorite (-OCl).                                         
                 Answer, page 4.  The examiner gives no patentable weight to the intended use of the                                              
                 resulting product of the process, a stabilized osmotic agent which can be effectively                                            
                 used in a dialysis solution.  Id.   See also, Brief, pages 12-13.                                                                

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