Appeal No. 2006-0295
Application 10/053,926
dependent claim 16 as we determined above, regardless of the amount of sago starch falling
within the claimed WF range present in the composition. The written description in the
specification describes “a comparable WF corn starch” (emphasis supplied) as one that has been
prepared in the same or different manner than the compared sago composition, that is, as
disclosed in the specification, the compared sago starch and corn starch containing compositions
consist only of starch and water (e.g., page 7, ll. 18-21, page 13, ll. 22-24, page 14, l. 12, to page
15, l. 1, page 15, ll. 10-12, page 16, ll. 2-40). No such disclosure is provided where the “sago
composition” contains additional ingredients (e.g., specification Examples 7 through 20). In any
event, we give the terms of claim 10 the broadest reasonable interpretation in these respects, as
requiring a certain gel strength of any composition containing any amount, however small, of
any manner of sago starch having a WF of from about 40 to about 80 or blends containing the
same, with water and any manner of additional ingredients compared to the same or similar
composition which contains a comparable WF corn starch.
Independent method claim 19 and dependent claims 20 and 26, encompass methods
comprising at least the step of adding to any manner of composition any amount, however small,
of any manner of sago starch of a WF of from about 40 to about 80 or blends containing the
same, wherein the compositions can contain any manner of additional ingredients as evinced by
claim 26, which compositions have a certain gel strength compared to a composition which
differs in the presence of a comparable WF corn starch as required by claim 20, in all of the
same respects that we have determined above with respect to appealed claims 9, 10 and 16.
Turning now to the ground of rejection of appealed claims 9 and 19 under § 102(b), it is
well settled that the examiner has the burden of making out a prima facie case of anticipation in
the first instance by pointing out where each and every element of the claimed invention,
arranged as required by the claim, is described identically in the reference, either expressly or
under the principles of inherency, in a manner sufficient to have placed a person of ordinary skill
in the art in possession thereof. See generally, In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1657 (Fed. Cir. 1990). It is further well settled that if a reference does not disclose a
specific embodiment which satisfies all of the claim limitations, the reference will nonetheless
describe the claimed invention within the meaning of § 102 if it “clearly and unequivocally . . .
[directs] those skilled in the art to [the claimed invention] without any need for picking,
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