Ex parte TOHILL et al. - Page 3




                Appeal No. 98-0459                                                                                                          
                Application 08/658,719                                                                                                      


                                                                OPINION                                                                     

                        In reaching our conclusion on the obviousness issues raised                                                         
                in this appeal, this panel of the board has carefully considered                                                            
                appellants’ specification and claims, the applied patents, and                                  2                           
                the respective viewpoints of appellants and the examiner.  As a                                                             
                consequence of our review, we make the determinations which                                                                 
                follow.                                                                                                                     

                        We reverse each of the examiner’s rejections of appellants’                                                         
                claims under 35 U.S.C. 103(a).                                                                                              

                        The contact lens storage compartment of Claim 1 comprises,                                                          
                inter alia, a main storage body compartment having a hinged top                                                             
                cover, and at least one additional lens storage compartment                                                                 
                “exterior” to the main storage compartment.                                                                                 

                        Reading the language of claim 1 in light of the underlying                                                          
                disclosure, it is clear to this panel of the board that the claim                                                           



                        2In our evaluation of the applied patents, we have considered all of                                                
                the disclosure thereof for what it would have fairly taught one of ordinary                                                 
                skill in the art.  See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA                                                
                1966). Additionally, this panel of the board has taken into account not only                                                
                the specific teachings, but also the inferences which one skilled in the art                                                
                would reasonably have been expected to draw from the disclosure.  See In re                                                 
                Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).                                                                    

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