Appeal No. 2002-0836 Page 6
Application No. 09/264,437
salt water acts as a heater element1, the electrodes themselves effectively act as
conductors rather than heater elements.
For the foregoing reasons, even if Carpenter’s apparatus were modified as
proposed by the examiner in view of the teachings of Stegemeier by providing a
plurality of electrodes or conductors 204 in each wellbore, this would still not result in
appellants’ claimed invention. It is elementary that to support an obviousness rejection,
all of the claim limitations must be taught or suggested by the prior art applied (see In re
Royka, 490 F.2d 981, 984-85, 180 USPQ 580, 582-83 (CCPA 1974)) and that all words
in a claim must be considered in judging the patentability of that claim against the prior
art (In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)). Thus, we
shall not sustain the examiner’s rejection of claim 1, or claims 2-7 which depend
therefrom, as being unpatentable over Carpenter in view of Stegemeier.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-7 under 35 U.S.C.
§ 103(a) is reversed.
1 Even if the salt water were considered to be an electrically conductive heater element as used in
claim 1, the salt water is certainly not surrounded by electrically insulating filler as required by claim 1. In
fact, the disclosed current flow from the electrodes to the salt water could not occur if the salt water were
surrounded by electrically insulating filler.
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