Appeal No. 2002-1356
Application No. 09/206,063
The examiner concludes (Answer, pages 4-5):
It would have been prima facie obvious to use NaBH4 to reduce a
starch or NaOCl to oxidize a starch.
Given that these agents have been set forth in the prior art as
having a selectivity for the processes of reducing or oxidizing polyols as
well as the art recognized advantage of increasing solubility and lowering
viscosity (in the case of NaOCl), one of ordinary skill in the art would have
been motivated to use these agents for said processes as well as have
more than a reasonable expectation of success in the use of these agents
for said processes.
In response to both rejections, appellant argues, the cited references “fail to
teach or suggest a number of features of the claimed invention, such as stabilizing an
osmotic agent.” Brief, page 9. Appellant argues that the examiner has incorrectly failed
to give patentable weight to this feature of the claimed invention. Id.
Assuming, arguendo, that the phrase “stabilizing an osmotic agent” is given
patentable weight in the claims, we do not find such a treatment of the claims requires a
conclusion of claim patentability. It is well settled that from the standpoint of patent law,
a compound and all of its properties are inseparable; they are one and the same. In re
Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963).
For example, with respect to claim 11, in our view, Horn clearly teaches oxidizing
maltodexrin with NaOCl to improve its stability. According to the specification,
maltodextrin (a starch) is considered an osmotic agent within the scope of the claims.
Because maltodextrin and all of its properties are inseparable; they are one and the
same. Thus, Horn discloses a method of stabilizing maltodextrin, and because one of
maltodextrin’s properties is that it is an osmotic agent, it can fairly be concluded that
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