October 2007KSR Training1 TC 3700 KSR Sample Rejection

October 2007KSR Training2 KSR Sample Rejection:  The following sample rejection is taken from the “Synthetic Oil-Filled Double- Bottom Pot and Pan” example.  Refer to claims and prior art references in the above example.

October 2007KSR Training3 KSR Sample Rejection:  Claims 1 and 2 are rejected under 35 U.S.C. 103(a) as being unpatentable over the combination of Proctor (USP 4,629,866) and Park (USP 6,191,393).  Regarding claim 1, Proctor discloses a cooking container for transferring heat through a double walled container (see title and abstract). The cooking container comprises an inner wall (16) having a top opening and a first heat-conductive plate bottom (30) to distribute applied heat to food contents within the shell; a second heat-conductive plate (28) that extends downwardly from the first plate adapted for placement directly on a heat source (e.g., an open flame or burner), and a sealed cavity (40) of predetermined volume between the first and second heat-conductive plates. An art recognized heat-transfer liquid is located in the sealed cavity, but does not completely fill the sealed cavity (40).

October 2007KSR Training4 KSR Sample Rejection:  Proctor specifically teaches that “[t]he heat-transfer liquid substantially fills the sealed cavity and preferably is an oil” (col. 2, ll ). Note also that the Proctor coffee pot is “adapted to” be placed on a burner.  Proctor differs from claim 1 in that Proctor does not specifically teach that silicon oil is an art recognized heat-transfer liquid. In addition, Proctor teaches that the heat-transfer liquid “substantially fills the sealed cavity” (col. 2, ll ) but does not expressly teach that the cavity is filled to at least 95 percent of its volume.

October 2007KSR Training5 KSR Sample Rejection:  Park teaches a cooking utensil having a double-layered structure which preserves heat efficiently as well as providing even heat distribution to materials within the utensil (see abstract). Park’s cooking utensil is “at least partially filled with a heat conduction medium…, such as silicon oil or other suitable materials known to one of ordinary skill in the art” (col. 4, ll ). The sealed cavity formed between the inner and outer walls are “filled with silicon oil up to about 55 to 90% by volume” (col. 4, ll ).

October 2007KSR Training6 KSR Sample Rejection:  Accordingly, Park complements the teachings of Proctor by teaching that silicon oil is recognized by those of ordinary skill in the art to be a heat-transfer oil that is suitable for filling a cavity formed between two sealed walls of a cooking container.  Furthermore, both Park and Proctor identify that a variety of heat-transfer materials are known in the art and are suitable equivalents for filling the cavity formed between the two sealed walls of a cooking container.

October 2007KSR Training7 KSR Sample Rejection:  Therefore, it would have been prima facie obvious to modify Proctor with the teachings of Park to include silicon oil as the heat-transfer oil since it has been found that silicon oil is an art recognized equivalent heat transfer material.  Regarding the limitation pertaining to “the cavity is filled to at least 95% of its volume”, both Proctor and Park teach that the cavity formed between the inner and outer wall of the container is “at least partially”, e.g., 55-90% (Park), or “substantially”/“not completely” (Proctor) filled with a heat-transfer oil.

October 2007KSR Training8 KSR Sample Rejection:  As Park explains, and would be obvious to one of ordinary skill in the art, some volume in the sealed cavity must remain unfilled to accommodate for the expansion of silicon oil when exposed to heat (col. 4, ll ).  Accordingly, the evidence establishes that the volume of heat-transfer material inserted into the sealed cavity is within the range of from about 55% to something less than 100% of the volume of the sealed cavity.

October 2007KSR Training9 KSR Sample Rejection:  “Determining where in a disclosed set of percentage ranges the optimum combination of percentages lies is prima facie obvious.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, (Fed. Cir. 2003); see also In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (“’[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.’” (quoting In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1995)).

October 2007KSR Training10 KSR Sample Rejection:  Regarding claim 2, Proctor does not teach that the inner and outer walls are sealed by brazing. However, it is noted that there are a limited number of choices available to a person of ordinary skill in the art for joining two metals, e.g., stainless steel. In this regard, it is noted that Park teaches that metal components of a cooking container are joined by brazing (col. 5, ll ).  Therefore, it would have been prima facie obvious to a person of ordinary skill in the art to braze the stainless steel inner and outer walls of Proctor’s cooking container to form a cavity, since brazing is suitable for joining two metals such as stainless steel.

October 2007KSR Training11 KSR Sample Rejection:  “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show it was obvious under 35 U.S.C. 103.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007). Therefore, it would have been obvious to use a brazing technique in order to join two metal pieces together.