Appeal No. 2006-0295
Application 10/053,926
person to convert sago starch into fluidity sago starch having a WF in the ranges disclosed for
fluidity corn starch by following the teachings of the reference with respect to fluidity corn
starch in the Examples and in Eden claim 6, as the reference clearly would have suggested the
use of fluidity sago starch in place of fluidity corn starch (col. 5, ll. 56-58, and col. 6, ll. 45-50),
even though an example of a specific fluidity sago starch is not disclosed by Eden, in the
reasonable expectation of obtaining compositions containing fluidity sago starch that can be used
for the purposes of Eden. See generally, Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804,
807, 10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989) (“That the ‘813 patent discloses a multitude of
effective combinations does not render any particular formulation less obvious. This is especially
true because the claimed composition is used for the identical purpose. [Citations omitted.]”);
see also In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“The fact that
neither of the references expressly discloses asymmetrical dialkyl moieties is not controlling; the
question under 35 USC 103 is not merely what the references expressly teach, but what they
would have suggested to one of ordinary skill in the art at the time the claimed invention was
made.”). Furthermore, the disclosure of a WF range for fluidity corn starch would have
reasonably suggested to one of ordinary skill in this art that a similar workable or optimum WF
range for fluidity sago starch can be obtained by routine experimentation. In re Aller, 220 F.2d
454, 456-58, 105 USPQ 233, 235-37 (CCPA 1955) (“[W]here general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.”).
We are mindful that Eden does not disclose the gel strength of any composition
containing a fluidity sago starch, or of compositions containing any other fluidity starch, vis-à-
vis “a comparable WF corn starch,” as required by claims 10 and 20. However, the silence of a
reference with respect to a particular property of compositions disclosed therein which otherwise
reasonably appear to be identical to those claimed as we have found above, does not alone
distinguish the claimed fluidity sago starch containing compositions from those taught by the
reference. See In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975) (“Appellants
have chosen to describe their invention in terms of certain physical characteristics . . . . Merely
choosing to describe their invention in this manner does not render patentable their method
which is clearly obvious in view of [the reference]. [Citation omitted.]”).
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