Appeal No. 2005-0191
Application No. 09/971,239
With the foregoing in mind, we find that representative claim 15 is directed to a
method which comprises applying a granular starch product which has been hydrolyzed
to a “range surrounding” an “estimated oil absorption maximum hydrolysis level”. To
that end, we point out that the specification states that oil absorption will “plateau after
hydrolysis has proceeded to a certain extent, typically from about 30% to about 60%”
(page 4, lines 26-28). It reasonably follows that granular starch which has been
hydrolyzed to a “range surrounding” an “estimated oil absorption maximum hydrolysis
level,” includes granular starch which has been hydrolyzed from less than about 30% to
more than about 60%, and everything in between. Thus, we find no difference between
the claimed method and the method disclosed by Kochan.2 That is, we agree with the
examiner that Kochan’s teachings of applying a granular starch product which has been
hydrolyzed from about 45% to about 90%, anticipates the invention described in
representative claim 15 which encompasses the use of a granular starch product which
has been hydrolyzed from levels of about 45% to more than 60%. See e.g., In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)(“claiming a
2 Since we find that the granular starch product described in the claims is the
same, or substantially the same, as the prior art products, it is reasonable to shift the
burden to the appellants to establish that the granular starch products made using the
claimed method differ from the starch products described in the applied prior art. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-334 (CCPA 1977) (“Where, as here,
the claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently possess
the characteristics of his claimed product”).
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