Appeal No. 2004-2047
Application 09/817,419
not inherent in the Whitney grain . . . merely because they are subject to the ‘same’ treatment.
This would only be true if the same grain type is used” (reply brief, page 1). Appellants point
out that one of ordinary skill in the art can determine the combination of conditions for each
grain to achieve the limitations of the claims (id.). Appellants contend that Whitney provides
evidence that starch not fully gelatinized will result in grain that will not process and has
undesirable eating properties in describing “undercooked” and “overcooked” grain berries in col.
1 thereof (id., page 2; see Whitney, col. 1, ll. 43-47). Appellants further contend that the
determination of birefringence is used in the art “to define the degree of gelatinization retained
by a starch granule,” alleging that “[w]hen a grain is substantially cooked, it will lose its
birefringency” (id., pages 2-3).
With respect to the examiner’s contention that the Sui declaration is not commensurate in
scope with the claims, appellants reply that the purpose of “the declaration was to defeat the
alleged anticipation of Whitney, showing that the Whitney example did not fall within the
present application” (id., page 3).
The examiner finds that appealed claims 3, 22 and 31 are obvious under § 103(a) over
Whitney in view of Fergason because one of ordinary skill in this art would have selected any
known grain to use in the processes of Whitney and thus would have used the high amylose corn
of Fergason in such process in the reasonable expectation of obtaining cooked starch as taught
by Whitney for use in food products (answer, pages 5-6).
Appellants submit that the appealed claims differ from Whitney because “the starch is not
gelatinized” and Fergason does not remedy this deficiency of Whitney (brief, page 10).
Appellants further allege that “it is clear from the application that the use of high amylose grain
is necessary to achieve a high total dietary fiber content as evidenced by Tables 2 and 3 which
show the correlation between high amylose and high TDF content,” neither of which is taught or
suggested by the references (id., pages 10-11).
The examiner responds that “[t]he limitation of ‘the starch does not have its granular
structure and birefringence completely destroyed’ is not the same as ‘the starch is not
gelatinized,” and thus appellants argue “a limitation that is not found in the claims” (answer,
pages 8-9).
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