TC 3700

1
KSR Sample Rejection

• TC 3700

2
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.

3
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).

4
KSR Sample Rejection

• Proctor specifically teaches that the
  heat-transfer liquid substantially fills the
  sealed cavity and preferably is an oil (col. 2,
  ll. 33-34). 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. 33-34) but does not expressly teach that the
  cavity is filled to at least 95 percent of its
  volume.

5
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). Parks 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. 40-43). 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. 43-44).

6
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.

7
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.

8
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. 46-47).
• 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.

9
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,
  1382-83 (Fed. Cir. 2003) see also In re Geisler,
  116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed.
  Cir. 1997) (It 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)).

10
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. 10-13).
• 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
  Proctors cooking container to form a cavity,
  since brazing is suitable for joining two metals
  such as stainless steel.

11
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 Intl 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.