Appeal No. 2004-2047
Application 09/817,419
describe their invention in terms of certain physical characteristics . . . . Merely choosing to
describe their invention in this manner does not render patentable their method which is clearly
obvious in view of [the reference]. [Citation omitted.]”).
As we discussed above, appellants’ arguments are not convincing that the claimed
processes and products patentably distinguish over the “substantially fully cooked” processes
and products described by Whitney. Furthermore, appellants state in the reply brief that the sole
purpose of the evidence in the Sui declaration is to show that the Whitney Example did not fall
within the claimed invention. In this context, even if the batch process stated to represent the
continuous process of the Whitney Example in the Sui declaration can reasonably be considered
to do so in spite of the departure from the process disclosed in the reference Example, the
evidence does no more than establish that the disclosure of “fully cooked wheat” berries in the
Whitney Example is correct. In this respect, there is no evidence in the declaration that pertains
to the “substantially fully cooked” processes also described as a matter of fact by Whitney, and
indeed, appellants do not state the evidence does so.3
Accordingly, we have again considered the totality of the record before us, weighing all
of the evidence of anticipation found in Whitney with appellant’s countervailing arguments for
non-anticipation in the brief and reply brief, and based thereon, conclude that the claimed
invention encompassed by appealed claims 1, 4, 5, 8 and 10 through 15 would have been
anticipated as a matter of fact under 35 U.S.C. § 102(b).
Turning now to the ground of rejection under § 103(a), we further are in agreement with
the supported conclusion advanced by the examiner that as a matter of law, prima facie, one of
ordinary skill in this art would have found in the combined teachings of Whitney and Fergason
the reasonable suggestion to use the high amylose content corn grain of Fergason in the
processes of Whitney in the reasonable expectation of obtaining processes and products in which
the corn berries are “substantially fully cooked,” as required by appealed claim 3 and fall within
appealed claims 22 and 31, as well as “fully cooked” which fall within appealed claims 22 and
31. Accordingly, we again consider the record as a whole with respect to this ground of
3 Cf. In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991)
(“It is not the function of this court to examine the claims in greater detail than argued by
appellant, looking for nonobvious distinctions over the prior art.”).
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