Appeal No. 2005-0191
Application No. 09/971,239
new benefit for an old process cannot render the process again patentable”); Verdegaal
Bros., Inc. v. Union Oil Co. of Calif., 814 F.2d 628, 632-33, 2 USPQ2d 1051, 1054 (Fed
Cir. 1987).
The appellants argue that Kochan does not teach or suggest the claimed step of
“determining an estimated oil absorption maximum hydrolysis level for said enzyme and
for said starch.” Brief, p. 5. We find this argument unconvincing for the reasons set
forth above. That is, the granular starch recited in claim 15 is in a product-by-process
format. Thus, the starch product, not the process by which it is made, may be rejected
under 35 U.S.C. § 102 and/or § 103. In re Thorpe, 777 F.2d at 697, 227 USPQ at 966.
Since the granular starch product in recited representative claim 15 is the same as the
granular starch product described by Kochan, we find that the method of applying said
product as described in the claim is unpatentable even though the prior art product was
made by a different process.
Accordingly, we affirm Rejections I and II with respect to Group II, claims 15-19.
Group III
With respect to Group III, our consideration of the issues is limited to
representative claim 27.
We find no error with the examiner’s reasoning that Kochan’s method of applying
a granular starch product which has been hydrolyzed to a level of about 45% to about
90% anticipates the method recited in representative claim 27 which is directed to a
method of applying a granular starch product which has been hydrolyzed to a “range
surrounding” an “estimated fluid absorption optimum hydrolysis level.” As discussed
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