Appeal No. 2001-0224
Application 09/045,511
have suggested to those of ordinary skill in the art that they
should have made the claimed composition or device, or carried
out the claimed process; and (2) whether the prior art would have
revealed a reasonable expectation of success in so doing. See In
re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988). Both the suggestion and the reasonable expectation
of success must be found in the prior art, not in the applicant’s
disclosure. Id.
According to the examiner, Lee discloses the invention
as claimed with the exception of insert stands attached to the
bottom of the insert and hinging along the longitudinal sides of
the insert. Final Rejection, Paper No. 7, mailed October 14,
1999, page 2. The examiner relies on Clayton for a disclosure of
a cooking device having insert stands and Vizurraga as disclosing
a collapsible slicing guide having longitudinal sides with
hinges. Id. According to the examiner, it would have been
obvious to one of ordinary skill in the art to:
(1) incorporate the insert stands of Clayton into Lee’s
insert since Lee teaches elevating an insert above the bottom
surface of an outer pan and the insert stands of Clayton would
serve the same purpose; and
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