Appeal No. 2004-2047
Application 09/817,419
applicant and the prior art are the same, the applicant has the burden of showing that they are
not. [Citations omitted.].” Spada, 911 F.2d at 709, 15 USPQ2d at 1658.
We have compared appealed claims 1 and 11 through 13, as we have interpreted these
claims above, with the teachings and inferences that we find one skilled in the art would have
found as a matter of fact in Whitney and decide that the reference provides substantial evidence
supporting the examiner’s prima facie case of anticipation of the claimed methods and products.
Thus, we again consider the record as a whole with respect to this ground of rejection in light of
appellants’ rebuttal arguments and the objective evidence in the Sui declaration as relied on in
the brief and reply brief. See generally, Spada, 911 F.2d at 707 n.3, 15 USPQ2d at 1657 n.3.
We cannot agree with appellants that one skilled in this art would find that the sole intent
of Whitney is to “fully cook,” and thus fully gelatinize, all of the starch in the grain berries in the
grain mass subjected to the disclosed continuous process. Indeed, while Whitney discloses that
this outcome is desirable, the reference describes a number of factors that make this outcome
difficult to achieve even in continuous processing mode (e.g., col. 3, lines 6-13, and 34-37), and
thus describes the disclosed process as producing grain berries that are “substantially fully
cooked.” In this respect, we agree with appellants (see above p. 3) and the examiner (see above
p. 4) that the reference language “substantially fully cooked” means that Whitney fully describes
processes in which all of the starch in the grain berries is not fully cooked, and thus is not fully
gelatinized. Consequently, as the examiner points out, because processes described by Whitney
do not fully cook all of the starch in the grain berries, the starch inherently satisfies the limitation
of appealed claim 1 that “the starch does not have its granular structure and birefringence
completely destroyed,” and thus produce “grain” which are so characterized in appealed claims
11 through 13.
We point out here that we agree with the examiner that appellants have not presented
evidence supporting their argument in the brief that the starch of the grain berries must be fully
gelatinized in order for the berries to be further processed by shredding. Indeed, the
acknowledged characteristics of under- and overcooked berries in Whitney relied on by
appellants in the reply brief does is not disclosed to apply to “substantially fully cooked” berries
and thus, does not evince that “substantially fully cooked” berries cannot be shredded.
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