Appeal No. 2005-0191
Application No. 09/971,239
(specification, p. 4) to mean that the term “about 42%” recited in representative claim 1
includes granular starch which has been hydrolyzed to “about 45%” as disclosed by
Kochan. However, in this case, we find this concern to be misguided.
We point out that claim 1, as originally filed, was directed to granular starch
which “has been hydrolyzed to a hydrolysis level ranging from about 30% to 44%.” In
response to the examiner’s rejection of the claim under 35 U.S.C. § 102(b) or, in the
alternative § 103, in view of Kochan, (i.e., the same rejection as is now before us), the
appellants amended the claim to recite a hydrolysis level ranging from about 30% to
about 42%.1
We find that a narrowing of representative claim 1 in this manner constitutes a
surrender of that subject matter which overlaps with Kochan by the appellants. Cf.,
1 In response to the final rejection, the appellants amended claim 1 to include
(i) an additional step of “determining an estimated oil absorption maximum hydrolysis
level for said starch”; and (ii) the phrase an “optimum oil absorption” hydrolysis level
ranging from about 30% to about 42%. We do not find that these additions provide a
further limitation to the claims. That is, if we assume, arguendo, that Kochan teaches a
method of applying a granular starch product which had been hydrolyzed to a hydrolysis
level ranging from about 42% to about 90%, said method would anticipate the claimed
invention because the starch products would have been the identical (due to the
overlapping hydrolysis level of about 42%) to the claimed starch products regardless of
whether Kochan denominated its starch product as having an optimum oil absorption
hydrolysis level, a water absorption hydrolysis level, or some other type of hydrolysis
level. Thus, we find that the examiner has correctly characterized the starch product as
being in a product-by-process format. Answer, pp. 6-7. We point out that it is well
established that with respect to product-by-process claims, patentability depends on the
product and not on the process by which it is made. In re Thorpe, 777 F.2d 695, 697,
227 USPQ 964, 966 (Fed. Cir. 1985)(“[i]f the product in a product-by process claim is
the same as or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process”).
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