Ex parte BERRY - Page 7




          Appeal No. 1999-2674                                                       
          Application No. 08/192,979                                                 


          contoured to engage and retain the eye via a scleral-corneal               
          region by the application of vacuum (column 3, lines 42                    
          through 52).  Like appellant (main brief, pages 13 and 14), we             
          perceive that the L’Esperance teachings lacks the now claimed              
          concave surface of the coupler which is urged against the                  
          outside surface of the cornea and through which infrared                   
          radiation is passed.                                                       

               The patent to Neefe relates to a method of correcting                 
          refractive error of the eye by applying heat and drugs to                  
          soften the cornea thereby allowing the cornea to be reshaped.              
          In                                                                         


          particular, the rearrangement of the cornea is brought about               
          by pressure applied to the cornea by a heated metal or plastic             
          concave mold which establishes a desired corneal curvature.                

               Simply stated, when we set aside in our minds that which              
          appellant has taught us in the present application, we readily             
          conclude that the applied prior art, in and of itself, would               
          not have suggested the method of claims 59 or 73.  It is quite             
          apparent to us that only by impermissibly relying upon                     
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