Appeal No. 2006-1027
Application No. 09/865,074
pages 4-5).
Appellants argue that the examiner has not identified any sections of Willard that
teaches or suggests a pregelatinized starch having the claimed characteristics (Brief,
page 3). Appellants further argue that Willard fails to recognize that the percentage of
pregelatinization, viscosity, and water absorption index are important, result-effective
variables for making a snack chip that need not be baked before frying (Brief, pages 4-
5). Appellants argue that Willard does not even recognize various degrees of
gelatinization, much less that this is an important variable for making a chip without a
baking step (Brief, page 4).
As correctly stated by the examiner (Answer, pages 4 and 6-8), claim 21 on
appeal is written in product-by-process format. When appellants choose to use this
type of claim format, the examiner only needs to meet a lesser burden of proof to make
out a prima facie case of obviousness as compared to claims drafted in conventional
formats. See In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974).
This lesser burden and the reasoning for it have been set forth by a predecessor of our
reviewing court:
It must be admitted, however, that the lack of physical description in a
product-by-process claim makes determination of the patentability of the
claim more difficult, since in spite of the fact that the claim may recite only
process limitations, it is the patentability of the product claimed and not of
the recited process steps which must be established. We are therefore of
the opinion that when the prior art disclose a product which reasonably
appears to be either identical with or only slightly different than a product
claimed in a product-by-process claim, a rejection based alternatively on
either section 102 or section 103 of the statute is eminently fair and
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