Appeal No. 2004-2047
Application 09/817,419
Accordingly, because Whitney further describes total moisture content of the base grain,
temperature and cooking time limitations which satisfy the corresponding limitations in appealed
claims 1 and 11 through 13, it reasonably appears from the substantial evidence in the reference
that the described processes of Whitney which “substantially fully cook” a base grain are
identical to the processes encompassed by appealed claim 1 and thus that the grain products
produced by the reference processes are identical to the grain products encompassed by appealed
claims 11 through 13, even though the limitation in appealed claim 1 “to provide a heat-treated-
grain having an increase of total dietary fiber content (“TDF”) of at least 10%” and the specific
limitations on the grain products in appealed claims 12 and 13 are not disclosed by Whitney.
See generally, Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58 (Fed. Cir. 1990) (“The Board
held that the compositions claimed by Spada ‘appear to be identical’ to those described by
Smith. While Spada criticizes the usage of the word ‘appear,’ we think that it was reasonable for
the PTO to infer that the polymerization by both Smith and Spada of identical monomers,
employing the same or similar polymerization techniques, would produce polymers having the
identical composition.”).
Therefore, appellants have the burden of patentably distinguishing the claimed invention
encompassed by appealed claims 1 and 11 through 13 from the processes and the products
thereof described as a matter of fact by Whitney with effective argument and/or objective
evidence establishing that the claimed methods encompassed by appealed claim 1 and the
claimed products encompassed by appealed claims 11 through 13 are not the same as those of
the reference. See generally, Spada, 911 F.2d at 709, 15 USPQ2d at 1658; In re Best, 562 F.2d
1252, , 195 USPQ 430, 432-34 (CCPA 1977) (“Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke,
[441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether the rejection is based on “inherency”
under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products. [Footnote and citation omitted.]”); see also
In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975) (“Appellants have chosen to
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