Appeal No. 2004-2047
Application 09/817,419
pointing out that the granular structure and birefringence was “totally destroyed” even though
the cooking conditions fall within the claimed ranges (id, pages 9-10). Appellants contend with
respect to claims 12 and 13, that the declaration establishes that the grain of the Whitney
Example does not have increased total dietary fiber content or a higher onset temperature (id.,
page 10).
The examiner responds that “[w]hile [Whitney] might teach completely cooked grain,
they also teach the grain can be substantially fully cooked . . . [which] means the grain is not
completely cooked and thus the starch does not have its granular structure and birefringence
completely destroy [sic, destroyed],” that is, “[t]he [claimed] starch is not fully gelatinized but it
can be substantially fully gelatinized which is what Whitney teaches” (answer, pages 5-6). The
examiner finds that appellants do “not have any evidence to show that if the starch is not fully
gelatinized, the grain will not shred properly and will have undesirable eating properties” (id.,
page 6). The examiner submits that even if appellants’ interpretation of “substantially” in
Whitney is “applied, the reference still meets the claimed limitation because the few grains that
are not gelatinized will not have their starch destroyed; thus, the starch does not have its granular
structure and birefringence completely destroyed” (id., page 7).
The examiner finds the showing based on wheat representing the Whitney Example and
corn for the claimed example in the Shi declaration unpersuasive for several reasons, including
that the showing “is not a true comparison” because of the difference in grains and is not
commensurate in scope with the claims which include any type of grain (id., pages 7 and 8). The
examiner further notes that because the wheat of the Whitney is “already gelatinized . . . no
endothermic event is observed from the DSC [that is, differential scanning calorimetry,] data”
(id., page 8).
Appellants reply, with respect to the examiner’s finding and argument that the properties
as claimed are thus inherent because the moisture content, temperature and cook time disclosed
by Whitney fall within the claimed ranges, that “[o]ne skilled in the art understands that different
moisture content/temperature/time combinations will result in the starch of a grain being or not
being completely gelatinized based on the grain type . . [and] [t]hus the properties as claimed are
1 The declaration under 37 CFR § 1.132 filed March 11, 2003.
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