Appeal 2006-2547
Application 10/095,409
Patent 6,237,775
1 suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
2 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, "[o]bviousness is not to
3 be determined on the basis of purpose alone." In re Graf, 343 F.2d 774, 777,
4 145 USPQ 197, 199 (CCPA 1965). However, "rejections on obviousness
5 grounds cannot be sustained by mere conclusory statements; instead, there
6 must be some articulated reasoning with some rational underpinning to
7 support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977,
8 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
9 Here, the Examiner has provided a reason for making the
10 combination, which we find credible and which Appellants have not
11 materially challenged, i.e., to effectively direct air flow and prevent food
12 passage out of the food pan into an interstitial space (Answer, 7). Instead,
13 Appellants have simply proffered an alternative means for removing "stray"
14 food that may drop into the interstitial space along with any residual water
15 when the food pans are removed from the preparation table (Reply Br., 6).
16 The fact that the Examiner's reason is not the same as Appellants’ alternative
17 solution is insufficient to rebut the conclusion of obviousness presented by
18 the Examiner. KSR Int'l v Teleflex, Inc., 127 S.Ct. at 1741, 82 USPQ2d at
19 1396; In re Dillon, 919 F.2d 688, 693-94, 16 USPQ2d 1897, 1901-02 (Fed.
20 Cir. 1990).
21 Secondly, "consisting essentially of" language opens the claimed
22 invention to unlisted components or ingredients that do not materially affect
23 the basic and novel properties of the invention. PPG Indus. v. Guardian
24 Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1354 (Fed. Cir. 1998).
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