Appeal No. 2006-0295
Application 10/053,926
With respect to claim 9, appellants contend that the claimed sago starch is patentable
because “it unexpectedly gels to form a strong gel” and “gels more quickly,” relying on
specification FIGs. 1-5 (brief, pages 2-3). Appellants point out that Eden discloses converted
“corn, potato, sweet potato, rice, sago, tapioca, waxy maze, sorghum, and the like,” at col. 6,
ll. 45-49, with “corn, sorghum, and wheat starches . . . preferably used” and “corn starch being
the most preferred,” at col. 6, ll. 51-56, and no reference Examples “use a fluidity sago starch”
(brief, page 3). On this basis, appellants submit that “Eden teaches away from sago” as claimed
which “is up to more than eight times stronger than corn gel” (id.). Appellants further contend
that Eden “never specifies any WF range in connection with sago” and that “[t]he only mention
of water fluidity is in the examples” (id.).2 Appellants argue that, contrary to the examiner’s
position, “the table [of WF values at the bottom of col. 8] is part of the methodology for
determining water fluidity” and “shows how to convert viscosity to fluidity numbers from a
water fluidity of 10 to 85, and dose not disclose specific water fluidities useful in Eden’s
invention” (id.). Appellants still further contend that, contrary to the examiner’s position “that
gel strength is inherently increased in Eden as a result of using the sago starch disclosed therein,
which is a viable alternative to the corn starch,” Eden “does not recognize the superiority of sago
starch, but he teaches away from using sago starch and does not actually try sago starch” (id.).
On this basis, appellants argue that “Eden gives only general guidance and is not at all specific
as to the particulars of the claimed invention,” pointing out that Eden lists “eight specific
starches” with “any degree of conversion” which “would not render obvious a claim limited to
simply a few” compounds, “particularly when such disclosure indicates a preference leading
away from the claimed compounds” (id., pages 3-4).
With respect to claim 19, appellants rely on arguments made with respect to claim 9,
further contending that “Eden does not increase the gel strength of a composition by the addition
of a fluidity sago starch . . . but by addition of a high amylose starch,” and thus “the fluidity
starch is merely an optional ingredient” (id., page 4).
In response, the examiner maintains that Eden “discloses a preference for using sago
starch as a viable alternative to those starches used in the examples” at col. 6, ll. 45-49, and “[i]t
2 Contrary to appellants’ position in this line of argument, Eden process claim 6 requires
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