Appeal No. 2004-2047
Application 09/817,419
The examiner finds that Whitney anticipates the processes of claims 1 and 11 through 13
under § 102(b) because the reference discloses a process of “heating grains . . . hydrated to have
a moisture content of from about 28-36% . . . in water at a temperature of from about 95-100
degrees C for about 20-40 minutes . . . until they are substantially fully cooked,” citing cols. 2-3,
which “is the same as the claimed process” since “[t]he moisture content and the heating
temperature and time are within the ranges claimed [and] [t]he properties as claimed are inherent
in the prior art product” because “the grain is subjected to the same treatment as claimed”
(answer, page 3). The examiner submits that
[t]he limitation of ‘the starch does not have its granular structure and birefringence
completely destroy [sic, destroyed]’ is equivalent to the disclosure of ‘substantially
fully cooked’ [in Whitney] because substantially fully cooked means the grains are not
completely fully cooked; thus, this means the starch does not have its granular
structure and birefringence completely destroy [sic, destroyed]. [Id.]
Appellants submit that the claimed invention encompassed by claims 1 and 11 through 13
is patentable over Whitney which states that the “process has the advantageous property of
gelatinization (see col. 2, lines 28-30),” because in the claimed invention, “the granules in the
heat-treated grain are not completely destroyed and thus are not fully gelatinized,” contending in
this respect, that the disclosure in the “Technical Field” and “Background” sections as well as at
col. 2, ll. 28-32 and 64, and in the sole Example of Whitney “clearly indicates that the intent of
the invention is to fully cook the berries and thus fully gelatinize the starch” so that it can be
shredded (brief, page 8). Appellants thus argue that “Whitney teaches away from the present
invention” on the basis that in Whitney, “[t]he term ‘substantially’ is intended to mean that while
it is the intent that all the grain be gelatinized, one practicing the art would fall within the
invention [of Whitney] if a few grains are not gelatinized” (id., page 9). In this respect,
appellants contend that in contrast to Whitney, the claimed method encompassed by appealed
claim 1 requires that “the starch does not have its granular structure and birefringence
completely destroyed,” pointing to the disclosure at page 9 of their specification (id.).
Appellants further contend that there is no anticipation because the declaration of
appellant Shi1 “shows that the starch in [the Example of] Whitney has been completely
gelatinized such that it is no longer birefringent,” relying on the data in the micrographs,
- 3 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007