Appeal No. 2005-0191
Application No. 09/971,239
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734-35, 62
USPQ2d 1705, 1711 (2002). That is, since the appellants narrowed the claim to avoid
the prior art by eliminating the limitation “to 44%,” we find that in the very least, the
subject matter of representative claim 1 no longer includes granular starch products
which have been hydrolyzed to 44%. Thus, the subject matter of claim 1 does not
overlap with the granular starch products taught by Kochan which have been
hydrolyzed to about 45%. Accordingly, we find that the teachings of Kochan do not
anticipate the invention described in representative claim 1.
As to the issue of obviousness, it is well established that the examiner has the
initial burden under 35 U.S.C. § 103 to establish a prima facie case. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). To that end, it is the
examiner’s responsibility to show that some objective teaching or suggestion in the
applied prior art, or knowledge generally available in the art, would have led one of
ordinary skill in the art to combine the references to arrive at the claimed invention. Pro-
Mold & Tool Co. v. Great Lakes Plastics, Inc., 745 F.3d 1568, 1573, 37 USPQ2d 1626,
1629 (Fed. Cir. 1996).
Here, we find that the examiner has not provided any reason based on the
applied prior art as to why the invention set forth in representative claim 1 would have
been obvious to one of ordinary skill in the art. Rather, the examiner appears to have
reversed the roles of the prior art and the subject matter of the claims in the rejection.
That is, the examiner states that the products taught by Kochan provide an expectation
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007