Ex Parte Scioscio

Board of Patent Appeals and Interferences

Aug 2, 2007

10818885 (B.P.A.I. Aug. 2, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PAUL R. SCIOSCIO
__________

Appeal 2007-2893
Application 10/818,885
Technology Center 3700
__________

Decided: August 2, 2007
__________

Before DONALD E. ADAMS, LORA M. GREEN, and NANCY J.
LINCK, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involves claims 1, 2, 4-10,
12, and 13, the only claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).

Appeal 2007-2893
Application 10/818,885

INTRODUCTION
The claims are directed to a cooking container. Claim 1 is illustrative:
1. A cooking container for transferring heat from an open flame or
burner to food contents therein, comprising:
a shell having a top opening and a first heat-conductive plate bottom
to distribute applied heat to food contents within said shell;
a second heat-conductive plate adapted for placement directly on said
open flame or burner extending downwardly from said first plate in forming
a sealed cavity therebetween of predetermined volume; and
a synthetic, silicon heat transfer oil filling said cavity to at least 95
percent of the volume thereof.

The Examiner relies on the following prior art reference to show
unpatentability:
Park US 6,191,393 Feb. 20, 2001
The following evidence is relied upon by the Board:
Proctor1 US 4,629,866 Dec. 16, 1986
The rejection as presented by the Examiner is as follows:
1. Claims 1, 2, 4-10, 12, and 13 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Park.
We reverse and enter a new ground of rejection.

1 Proctor is cited and described by Appellant (Specification 2).
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DISCUSSION
Claims 1, 2, 4-10, 12, and 13 stand rejected under 35 U.S.C § 103(a)
as unpatentable over Park. Claim 1 is drawn to a cooking container. Claims
2, 4-10, 12, and 13 depend, directly or indirectly, from claim 1.

CLAIM INTERPRETATION:
The cooking container of claim 1 comprises (1) a shell; (2) a second
heat-conductive plate; and (3) a synthetic, silicon heat transfer oil filling.
Claim 1 requires the shell to have a top opening and a first heat-
conductive plate bottom. The first heat-conductive plate bottom is to
distribute applied heat to food contents within the shell.
Claim 1 requires that the second heat-conductive plate extend
downwardly from the first plate to form a sealed cavity of predetermined
volume therebetween. In addition, claim 1 requires that the second heat-
conductive plate is adapted for placement directly on an open flame or
burner. We find that the phrase adapted for placement directly on an open
flame or burner language is a positive structural limitation, not merely a
description of the intended use of the claimed invention (Cf. Answer 4-5).
See In re Venezia, 530 F.2d 956, 958-59, 189 USPQ 149, 151 (CCPA 1976).
Lastly, claim 1 requires that the cavity formed between the first and
second plates is filled to at least 95 percent of its volume with a synthetic
silicon heat transfer oil.

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Application 10/818,885

ANALYSIS:

The Examiner finds that Park teaches a pot having a shell with a first
heat-conductive plate, a second heat-conductive plate, and a sealed vertical
cavity (Answer 3). The Examiner finds that the vertical space of Park’s pot
is partially filled (up to about 55-90% by volume) with a heat conduction
medium, such as silicon oil (id.). According to the Examiner, “it would have
been an obvious matter of design choice to a person of ordinary sill [sic] in
the art to have the sealed cavity of Park filled to 95 percent with silicon oil. .
.” (id.).
Park teaches a cooking utensil that comprises
an outer shell having an opening; an inner shell disposed inside
the outer shell through the opening, forming wall and bottom
spaces between the outer and inner shells, wherein the . . . wall
space is formed substantially along the height of the inner shell,
wherein the wall and bottom spaces contain at least partially a
heat conductive medium; and a heating coil arranged on the
bottom of the outer shell for heating the outer shell of the
cooking utensil.

(Park, col. 2, l. 66 – col. 3, l. 8, emphasis added.) As Park explains, “[t]he
cooking utensil includes a built-in controller arranged on [the] outside of the
outer shell and connected to the heat coil to control [the] amount and period
of heat provided to the cooking utensil” (Park, col. 3, ll. 9-12). We do not
find, and the Examiner has failed to identify, a teaching in Park to suggest
that Park’s cooling utensil can be adapted for placement directly on an open
flame or burner. In this regard, we note that the Examiner does not address
the requirement in the body of Appellant’s claim that the second heat-
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conductive plate is adapted for placement directly on an open flame or
burner.
At best, the Examiner finds that the preamble’s recitation of the
intended use of the device2 “has not been given patentable weight” (Answer
4-5). However, as discussed above, we find that the requirement in the body
of claim 1 that the second heat-conductive plate is adapted for placement
directly on an open flame or burner provides a positive structural limitation
on the claimed cooking container. By failing to address all the claim
limitations, the Examiner’s prima facie case of obviousness is in error. In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970), “[a]ll
words in a claim must be considered in judging the patentability of that
claim against the prior art.”
As Appellant explains, Park’s cooking utensil is a roaster, “commonly
referred [to] as an electric crock pot -- which sits on a counter and cooks on
low heat for hours. It is not one which sits over any flame or burner as
specified in Appellant’s claims” (Br. 4). We agree.
Therefore, for the foregoing reasons, we reverse the rejection of
claims 1, 2, 4-10, 12, and 13 under 35 U.S.C § 103(a) as unpatentable over
Park.

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. §41.50(b), we set forth the following new
ground of rejection.

2 The preamble of claim 1 states that the cooking container is for transferring
heat from an open flame or burner to food contents therein (claim 1).
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Claims 1, 2, 4-10, 12, and 13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Proctor and Park.
Proctor teaches a device for transferring heat through a double walled
container (Proctor, title and abstract). Proctor’s container “may be used with
a liquid or solid held in any type or size container and is useable in the food
serving field in general. The present invention can be used with cafeteria
serving pans and coffee storage pots which store coffee made in large urns”
(Proctor, col. 4, ll. 62-66). Proctor’s “container includes an outer wall
adapted to be heated by a heating source and an inner wall secured to the
outer wall. A sealed cavity is formed between the inner and outer walls. A
heat transfer liquid is located in the sealed cavity” (Proctor, col. 2, ll. 24-27).
In addition, Proctor teaches that “[t]he heat-transfer liquid substantially fills
the sealed cavity and preferably is an oil” (Proctor, col. 2, ll. 33-34). More
specifically, Proctor teaches that the heat-transfer liquid does not completely
fill the space defined between the inner and outer walls (Proctor, col. 3, ll.
15-18), but instead is advantageously heated prior to sealing the liquid
between the two walls to create a vacuum as the liquid cools within the
sealed device (Proctor, col. 4, ll. 58-61).
According to Proctor, “[t]he heat-transfer liquid of the present
invention may be any of various heat-transfer liquids known in the art”
(Proctor, col. 4, ll. 8-9). The double-walled enclosure may be made of, inter
alia, stainless steel (Proctor, col. 3, ll. 60-63).
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Application 10/818,885

For clarity, we reproduce Proctor’s figure 1 below:

Accordingly, with reference to Proctor’s figure 1, we find that Proctor
teaches a cooking container for transferring heat from a heat source (e.g., an
open flame or burner) to food contents therein which comprises:
1. an inner wall (16, e.g., a shell) having a top opening and a first
heat-conductive plate bottom (e.g., 30) to distribute applied heat to food
contents within the shell;
2. a second heat-conductive plate (e.g., 28) that extends downwardly
from the first plate, is adapted for placement directly on a heat source (e.g.,
an open flame or burner), and forms a sealed cavity (40) of predetermined
volume between the first and second heat-conductive plates; and
3. an art recognized heat-transfer liquid that does not completely fill
the sealed cavity (40).
Proctor differs from claim 1 in two regards. First, Proctor does not
specifically teach that silicon oil is an art recognized heat-transfer liquid.
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Second, 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.
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 (Park, 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” (Park, col.
4, ll. 40-43). More specifically, Park teaches that the sealed cavity formed
between the inner and outer walls of the utensil be “filled with silicon oil up
to about 55 to 90% by volume” (Park, col. 4, ll. 43-44).
Accordingly, Park compliments 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. Further, as discussed above, 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 two sealed
walls of a cooking container. Therefore, we find that it would have been
prima facie obvious to modify Proctor with the teachings of Park to include
silicon oil as the heat-transfer oil. Where, as here, the prior art recognizes
two components to be equivalent, an express suggestion to substitute one for
another need not be present in order to render such substitution obvious. In
re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA 1982).
In addition, both Proctor and Park teach that the cavity formed
between the inner and outer wall of the container is “at least partially,” e.g.,
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55-90% (Park), or “substantially”/“not completely” (Proctor) filled with a
heat-transfer oil. As Park explains, and would be obvious to a person of
ordinary skill in the art, some volume in the sealed cavity must remain
unfilled to accommodate for the expansion of silicon oil [(or other heat-
transfer material)] when exposed to heat” (Park, 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.
“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)
(“‘[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 1955)). In our opinion, the amount of the sealed
cavity’s volume that is to be left for the expansion of the heat-transfer
material is well within the purview of a person of ordinary skill in this art to
determine by routine optimization.
We recognize Appellant’s assertion that by filling the cavity of the
claimed container “‘to at least 95% of the volume’ . . . leaves almost no
room for boiling as there is no space for any build up of pressure to occur”
(Br. 5). We, however, find no evidence on this record to suggest that a
liquid filling a sealed container to its capacity or slightly less than its
capacity will not, upon heating to its boiling point, expand and build up
pressure within the sealed container. Accordingly, we are not persuaded by
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this assertion or the arguments based on this assertion (id.). It is well settled
that argument by counsel cannot take the place of evidence. In re Cole, 326
F.2d 769, 773, 140 USPQ 230, 233 (CCPA 1964); In re Geisler, 116 F.3d
1465, 1471, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997).
On reflection, it is our opinion that the cooking container of
Appellant’s claim 1 would have been prima facie obvious to a person of
ordinary skill in the art at the time the invention was made in view of the
combination of Proctor and Park.
Claim 2 depends from and further limits the cooking container of
claim 1 to one of a volume of air or vacuum filling the remaining volume of
the cavity. As discussed above, Proctor teaches that the heat-transfer oil is
advantageously heated prior to sealing the liquid between the two walls of
the container so that a vacuum will be created as the liquid cools within the
sealed device (Proctor, col. 4, ll. 58-61). Accordingly, we find that
Appellant’s claim 2 would have been prima facie obvious to a person of
ordinary skill in the art at the time the invention was made in view of the
combination of Proctor and Park.
Claim 4 depends from and further limits the shell and the second heat-
conductive plate of claim 1, requiring that they be composed of the same
material. Claim 5 depends from and further limits the material of claim 4 to
stainless steel. Proctor teaches a cooking container wherein both the inner
and outer walls are made of stainless steel (Proctor, col. 4, ll. 54-57).
Accordingly, we find that Appellant’s claims 4 and 5 would have been prima
facie obvious to a person of ordinary skill in the art at the time the invention
was made in view of the combination of Proctor and Park.
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Claim 6 depends from and further limits the cooking container of
claim 5, requiring that the first and second heat-conductive plates are brazed
together in forming the sealed cavity. Proctor does not teach that the inner
and outer walls are sealed by brazing. We find, however, 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, we note that Park
teaches that metal components of the cooking container disclosed therein are
joined, inter alia, by brazing (Park, col. 5, ll. 10-13). Therefore, we find that
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 together to form a cavity. “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 not of innovation but of ordinary
skill and common sense. In that instance the fact that a combination was
obvious to try might show that is was obvious under § 103.” KSR Int’l Co.
v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007).
Accordingly, we find that Appellant’s claim 6 would have been prima facie
obvious to a person of ordinary skill in the art at the time the invention was
made in view of the combination of Proctor and Park.
Claim 7 depends from and further limits the cooking container of
claim 1 to include a lid that covers the shell top opening. Claim 8 depends
from and further limits claim 7, requiring that the shell, second heat-
conductive plate and lid are all composed of the same material. Claim 9
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depends from and further limits claim 8, requiring that the shell, second
heat-conductive plate and lid are all composed of stainless steel. As
discussed above, Proctor’s container “may be used with a liquid or solid held
in any type or size container and is useable in the food serving field in
general. The present invention can be used with cafeteria serving pans and
coffee storage pots which store coffee made in large urns” (Proctor, col. 4, ll.
62-66). In this regard, we find that a person of ordinary skill in the art
would recognize that cooking containers, such as coffee pots and those
containers usable in the food serving field, e.g., cafeteria serving pans, have
lids. Further, as discussed above, Proctor teaches the use of stainless steel
for the inner and outer walls of the cooking container. We find that a person
of ordinary skill in the art would recognize that lids can be made of stainless
steel. Accordingly, we find that claims 7-9 would have been prima facie
obvious to a person of ordinary skill in the art at the time the invention was
made in view of the combination of Proctor and Park.
Claim 10 depends from and further limits the shell of claim 1 to
comprise a sauce pot. As discussed above, Proctor’s container “may be used
with a liquid or solid held in any type or size container and is useable in the
food serving field in general. The present invention can be used with
cafeteria serving pans and coffee storage pots which store coffee made in
large urns” (Proctor, col. 4, ll. 62-66). We find that a person of ordinary
skill in the art would recognize that containers usable in the food serving
field include a sauce pot. Accordingly, we find that claim 10 would have
been prima facie obvious to a person of ordinary skill in the art at the time
the invention was made in view of the combination of Proctor and Park.
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Claim 12 depends from and further limits claim 1, requiring that the
shell be a volume substantially 12 times the volume of the sealed cavity.
Claim 13 depends from and further limits the shell of claim 12 to consist of a
pot of twelve quart volume. As discussed above, Proctor teaches that any
size container usable in the food serving filed in general (id.). In addition,
Proctor teaches that “[t]he quantity of heat transferred by the double-walled
container is a direct function of the surface area, particularly the surface area
in direct contact with the contents of the coffee pot” (Proctor, col. 3, ll. 64-
67). Stated differently, a person of ordinary skill in the art would have
recognized that the quantity of heat transferred by the double-walled
container taught by the combination of Proctor and Park is a direct function
of the surface area in direct contact with the contents of the container.
Accordingly, a person of ordinary skill in the art would have recognized that
to transfer more or less heat to the contents in a container, you would use a
double-walled container with more or less available surface area.
Accordingly, double-walled container with a shell volume that is
substantially 12 times the volume of the sealed cavity; or is of a twelve quart
volume would have been prima facie obvious to a person of ordinary skill in
the art at the time the invention was made, based on a determination of the
amount of surface area required for the particular liquid or solid being
prepared.

SUMMARY
We reverse the rejection of claims 1, 2, 4-10, 12, and 13 under 35
U.S.C § 103(a) as unpatentable over Park.
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We enter a new ground of rejection of claims 1, 2, 4-10, 12, and 13
under 35 U.S.C § 103(a) as unpatentable over Proctor and Park.

TIME PERIODS FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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REVERSED; 41.50(b)

lbg

CHARLES I. BRODSKY
2 BUCKS LANE
MARLBORO NJ 07746

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