Appeal 2007-2893
Application 10/818,885
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).
5
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