Appeal No. 2005-0941
Application 09/941,029
In the present case, the prior panel determined that Spremulli, Emmer and Margulies
were each within appellant’s field of endeavor, which the specification of the present
application (page 1) indicates “relates to a heat-conducting support.” The prior panel
specifically found that each of the above-noted patents related to a support formed of metal,
thereby inherently having the capability of conducting heat, even if such a characteristic was
not specifically disclosed therein, thus making the supports in the three patents at issue
heat-conducting supports. We see no reason to alter or overturn those determinations.
Appellant’s arguments in the request for rehearing do not appear to specifically challenge
the prior panel’s determination that Spremulli, Emmer and Margulies are within appellant’s
field of endeavor. Instead, the arguments appear to urge only that one of ordinary skill in the
art, seeking to solve appellant’s problem of providing good support for a vessel as well as
good heat transfer thereto, would not reasonably be expected or motivated to look to the
garbage can of Spremulli, the coffee bottle support plate of Emmer, or the paper sundae
dish holder of Margulies. Thus, it appears that appellant’s arguments are directed to the
second aspect of the above-noted test for non-analogous art, i.e., whether a reference is
reasonably pertinent to the particular problem with which the inventor was concerned.
However, we note that the twofold test defined above is fully satisfied by the prior panel’s
determination that each of the three applied patents in question are within appellant’s field of
endeavor. Thus, in this case, no inquiry into whether the references are reasonably
pertinent to the particular problem with which the inventor was concerned is required to
resolve the issue of non-analogous art. On that basis alone, appellant’s arguments in the
request for rehearing are unpersuasive. Moreover, we simply do not agree with appellant’s
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