Appeal No. 2006-0295
Application 10/053,926
is not necessary for [Eden] to recognize that sago starch is superior to other starches” (answer,
page 3). The examiner further maintains that Eden “discloses a water fluidity range of 40-80 for
‘converted starches,’” at col. 8, ll. 30-68, and that “the 8 converted starches listed by [Eden] are a
very limited number and do not constitute a multitude of compounds that would teach away from
selecting sago starch as the starch of choice” (id., pages 3-4; emphasis original). The examiner
finds that while Eden “may not recognize that gel strength increases, such a result is obviously
apparent since [Eden’s] sago starch has the same physical characteristics, i.e., water fluidity, as”
the “claimed starch” (id.).
Appellants reply that while Eden discloses eight starches, “any water fluidity may be
used,” and thus, eight starches are disclosed “with a water fluidity of 10,” et seq., “which
Applicants would consider a multitude” of compounds (reply brief, pages 1-2).
With respect to issues of anticipation, it is not relevant whether a reference teaches away
from a claimed invention, see Celeritas Technologies Ltd. v. Rockwell International Corp.,
150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522 (Fed. Cir. 1998) (“[T]he question whether a
reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.”), or
whether an unexpected property is alleged for a claimed product which is not disclosed by a
reference for products otherwise reasonably appearing to be chemically identical to claimed
product. See, e.g., Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58. We consider these issues
of obviousness under § 103(a) below.
The teachings that one skilled in the art, with respect to issues of anticipation under
§ 102(b), and that one of ordinary skill in the art, with respect to issues of obviousness under
§ 103(a), would have found in Eden is central to the issues in this appeal, including the new
ground of rejection that we enter below. We agree with the examiner that Eden provides ample
direction to fluidity sago starch in Eden to one skilled in this art, finding in this respect that the
reference discloses that the “high amylose starches can be used . . . in combination with
converted starches other than high amylose starches (e.g., fluidity corn or sago starches) (col. 5,
ll. 54-58).3 Thus, we find as a matter of fact that one skilled in this art would not have had to
“converted corn starch having a [WF] of about 40-80.”
3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
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