Appeal No. 2004-2047
Application 09/817,419
rejection in light of appellants’ rebuttal arguments as relied on in the brief and reply brief. See
generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We recognize that, as pointed out by appellants, Whitney does not specifically disclose
the use of high amylose corn grain in the continuous processes disclosed therein, either resulting
in “substantially fully cooked” or “fully cooked” berries, and the correlation between amylose
content and total dietary fiber. However, we fail to find in Whitney any limitation with respect
to the kind of grain that can be cooked in the disclosed processes (see, e.g., col. 2, ll. 17-23).
Indeed, while it may be that high amylose grains may be more difficult to cook, as appellants
allege, we note again here that Whitney recognizes a number of factors which would be taken
into consideration by one of ordinary skill in this art in determining how to cook a particular gain
(e.g., col. 3, lines 6-13). In any event, appellants’ unsupported argument is insufficient to
establish that one of ordinary skill in this art would have been led away from using the grain of
Fergason in the processes of Whitney, and particularly in the absence of evidence to that effect
in Fergason. See In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA 1979); In re
Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); see also In re Gurley, 27 F.3d
551, 552-53, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994).
Appellants further allege that it is clear from specification Tables 2 and 3 that a high
amylose content grain is necessary to achieve high total dietary fiber content, pointing out that
this relationship is not suggested by the combination of references. We find that specification
Table 2 is based on “normal maize grains” which, of course, is not high amylose grain. We note
that only the fourth run reported in this table shows an increase of total dietary fiber that exceeds
the total dietary fiber of the base grain by 10%. In the runs with high amylose grains reported in
Table 3, only samples 3 and 4 of HylonŽ V and samples 3 and 5 of LAPS meet the 10% increase
in total dietary fiber limitation specified in appealed claims 3, 22 and 31, even though in several
of the other samples, the moisture and cook temperatures fall within such ranges in at least
appealed claims 22 and 31, with that of several samples also falling within such ranges in
appealed claim 3. Appellants do not explain how such evidence supports their position.
Thus, we find no evidence in the record which establishes that an increase in total dietary
fiber would have been an unexpected result from combining the teachings of Whitney and
- 13 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007