Appeal No. 2004-2047
Application 09/817,419
Appellants reply that “there is no suggestion in Whitney that high amylose grains could
be used although they were well known at the time of the [Whitney] invention,” and allege that
“one skilled in the art of cereal making knows that high amylose grains are more difficult to cook
out and have other attributes which would lead the skilled artisan away from using such grain”
(reply brief, page 2). Appellants also contend that Whitney or Fergason would not have
suggested that “such a high total dietary fiber . . . would be achieved by such combination” (id.).
In order to review the examiner’s application of prior art to the appealed claims and
appellants’ arguments with respect thereto, it is necessary to interpret the language of appealed
claims 1, 3 and 22 and appealed claims 11 through 13 and 31, drawn to method and product,
respectively, by giving the claim terms their broadest reasonable interpretation consistent with
the written description provided in appellants’ specification as it would be interpreted by one of
ordinary skill in this art, see In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), without
reading into these claims any limitation or particular embodiment which is disclosed in the
specification. See Morris, supra; Zletz, supra; In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15
(CCPA 1978).
The claimed method of preparing a grain containing starch encompassed by appealed
claim 1 comprises at least batch or continuous processes of heating in water any base grain,
including the specified amylose content grains of appealed claim 3, having the specified
moisture content at the specified temperature for the specified time “under a combination of
moisture and temperature conditions” to achieve the limitations (1) “that the starch does not have
its granular structure and birefringence completely destroyed” and (2) “to provide a heat-treated-
grain having an increase of total dietary fiber content (“TDF”) of at least 10%.” The claimed
method of preparing a grain containing starch encompassed by appealed claim 22 comprises at
least heating any grain containing starch having at least 40% by weight amylose and the
specified moisture content at the specified temperature “under a combination of moisture and
temperature conditions” to achieve the sole limitation of providing “a heat-treated-grain having
an increase of total dietary fiber (“TDF”) content of at least 10%.” The transitional term
“comprising” opens each of these claims to encompass methods which have additional steps and
conditions, such as a step or steps of hydrating a base grain to attain a moisture level within the
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