Appeal No. 2006-0379
Application No. 10/315,780
67 of Devic. The examiner states that these conditions are
consistent with what appellant discloses in the specification
that are necessary for minimal exposure of the endosperm to
peroxide, and refers to page 11 of appellant’s specification.
Beginning on page 6 of the brief, appellant argues that
claim 50 is directed to a lightened grain kernel and requires
that the grain kernel has an inner endosperm having at most a
minimal exposure to any peroxide. On page 7 of the brief,
appellant also argues that Devic is concerned with treating
ground material. Appellant argues that Devic lacks any
disclosure of treating a whole grain.
With regard to the “ground material” argument, we are not
convinced by this line of argument for the reasons discussed
supra, in the previous art rejection. While we appreciate
appellant’s discussion of other disclosures of Devic, regarding
treatment of powdered pulp, etc., the reference is not so
limited. We note that one of ordinary skill in the art would
have evaluated Devic’s disclosure as a whole, rather than solely
the working examples or preferred embodiments, because a prior
art disclosure is not limited to its working examples or to its
preferred embodiments. Merck & Co. Inc. v. Biocraft Labs. Inc.,
874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In re
Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (CCPA
1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280
(CCPA 1976); In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510
(CCPA 1966).
With regard to the “minimal” exposure to peroxide argument,
the examiner has found that Devic teaches a soak time and
temperature that is similar to the soak time and temperatures
8
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