Appeal No. 2005-0191
Application No. 09/971,239
that the claimed products would function as dusting powders according to the disclosure
of Kochan. To establish a prima facie case of obviousness, the examiner must
demonstrate that the teachings of Kochan would have suggested the claimed method
and that there was a reasonable expectation that the claimed granular starch product
would have the claimed characteristics. In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d
1438, 1444 (Fed. Cir. 1991); In re Eli Lilly & Co., 902 F.2d 943, 947, 14 USPQ2d 1741,
1745 (Fed. Cir. 1990); In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1680 (Fed.
Cir. 1988). Since the examiner has not done so, we cannot affirm the rejection.
Accordingly, we reverse Rejections I and II with respect to claims 1-8.
Group II
As indicated above, with respect to Group II, we consider the issues as they
apply to representative claim 15.
Here, we find that Kochan describes a method of applying a granular starch
product which anticipates the subject matter recited in claim 15.
As discussed above (see, footnote 1), we agree with the examiner that the starch
product recited in the claims is in a product-by-process format. In re Thorpe, 777 F.2d
at 697, 227 USPQ at 966. When claims are presented in this manner, it is the
patentability of the product which must be established. Thus, if there are no substantial
differences between the claimed granular starch products and those described in the
prior art, the prior art products anticipate, or render obvious, the inventions described in
claims. Id. at 697, 227 USPQ at 966.
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