Appeal No. 2006-0295
Application 10/053,926
references as applied. However, we designate our affirmance as involving new grounds of
rejection pursuant to 37 CFR § 41.50(b) (2005) because we rely on Eden alone and combined
with Jeffcoat, Park and Yuan in a manner materially different from that of the examiner, and
further include in the new grounds of rejection claims 9 and 19 which were not previously
rejected under § 103(a) over Eden, as to which matters appellants have not had an opportunity to
respond. See generally, In re Eynde, 480 F.2d 1364, 1370-71, 178 USPQ 470, 474-75 (CCPA
1973); Manual of Patent Examining Procedure § 1213.02 (8th ed., Rev. 3, August 2005).
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and Office action and to the brief and reply brief for a complete
exposition thereof.
Opinion
In order to review the examiner’s application of prior art to appealed claims 9, 10, 16, 19,
20 and 26, we first interpret these claims by giving the terms thereof the broadest reasonable
interpretation in their ordinary usage in context as they would be understood by one of ordinary
skill in the art in light of the written description in the specification unless another meaning is
intended by appellants as established in the written description of the specification, and without
reading into the claims any limitation or particular embodiment disclosed in the specification.
See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830
(Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
The plain language of independent product claim 9 encompasses compositions
comprising at least any amount, however small, of any manner of sago starch which has a water
fluidity of from about 40 to about 80, and any amount, however small, of water. According to
the written description in the specification, the “base material . . . is native sago starch extracted
from the pith of the sago palm tree, including high amylose varieties in which at least 40% of the
starch is amylose” and “may be modified, either chemically or physically, using techniques
known in the art” (page 3, ll. 11-16), including, “without limitation,” the chemical and physical
modifications set forth at page 3, l. 17, to page 4, l. 2, such as cross-linking, acetylation,
esterification, hydroxyethylation, hydroxypropylation, phosphorylation, inorganic esterification,
and thermal-inhibition, wherein the products can be “cationic, anionic, nonionic, and
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