Appeal No. 2006-0295
Application 10/053,926
We have considered here the arguments raised by appellants with respect to Eden set
forth with respect to the ground of rejection under § 102(b) in the brief and reply brief, which we
considered above, which arguments appellants further rely on with respect to the claims 10 and
20 (brief, page 4). We are not convinced by appellants’ arguments that one of ordinary skill in
this art routinely following the teachings of Eden would not arrive at a variety of compositions
containing the claimed sago starch in the claimed WF range encompassed by the broad range of
compositions encompassed by these claims as we have interpreted them above. Furthermore, we
found above that Eden would have reasonably disclosed fluidity sago starch containing
compositions as claimed even though the reference does not contain an example to such starch or
compositions containing the same. Indeed, we find no disclosure in Eden which would have
taught away from sago starch containing compositions as claimed. This is because Eden does
not contain any disclosure which criticizes, discredits or otherwise discourages forming fluidity
sago starch, and particularly suggests that the same can be prepared and used in the same manner
as fluidity corn starch. See In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1145-46 (Fed.
Cir. 2004).4
Appellants further argue, with respect to claims 16 and 26, that Jeffcoat and Park do not
disclose sago starch, and that Yuan discloses sago starch but does not disclose a WF range
therefor, and submit that “Eden does not use the same sago starch as claimed” and would not
have suggested that the starches used therein “are useful in any application other than gum
confections” (brief, pages 4-5). However, appellants’ arguments are based on the contention that
Eden would not have disclosed the claimed sago starch containing compositions which do not
address our findings with respect to this reference above.
Appellants rely in the brief and reply brief on evidence in specification Examples 5 and 6
in which compositions consisting of a fluidity starch and water, wherein the starches are
4 See also In re Gurley, 27 F.3d 551, 552-53, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon reading the reference
would be discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference’s disclosure is unlikely to be productive
of the result sought by the applicant. [Citations omitted.]”).
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