Appeal No. 2006-1504 Page 8
Application No. 09/935,297
The appellant does argue that Lacey does not disclose that the opening defined by the
free ends of the fingers has a circumference which is larger than the circumference of the head of
the user (reply brief, p. 10). Be that as it may, none of appellant’s claims requires such. On the
contrary, claims 1, 7, 15, 23, 26 and 30 recite an opening which is smaller than the head.
The appellant also argues that Lacey does not disclose or suggest that the dimensions of
the fingers are such that when the device is lowered onto the head of the user, the free ends of
the fingers will apply pressure to and thus massage the user’s head (reply brief, p. 10). Even
without such express disclosure, one of ordinary skill in the art at the time of appellant’s
invention would have readily understood that the “massage” effect of the device of Lacey’s
design would be achieved by contact and pressure of the illustrated fingers to the head.
Moreover, the photograph attached as Appendix B to appellant’s reply brief evidences
appellant’s concession that the dimensions of the Lacey device are such that when the device is
lowered onto the head of the user, the free ends of the fingers will apply pressure to and thus
massage the user’s head.
The appellant’s argument that Lacey does not disclose or suggest that the space defined
within the fingers is large enough to receive the head of the user (reply brief, p. 10) is not well
taken. We observe, in this regard, that the claims do not require that the entirety of the head of
the user be received within the head-receiving space.
The appellant attempts to rely on the two photographs attached as Appendices B and C to
illustrate the difference between the Lacey device, which allegedly does not include a head-
receiving space, and appellant’s device, which the appellant urges does include a head-receiving
space. Initially, we note that, although the appellant characterizes the photograph of Appendix B
as illustrating the Lacey device, this photograph assumes details, such as dimensions and degree
of flexibility, not described in the Lacey design. While the appellant, as the inventor of the
Lacey design, may well have contemplated the type and size device illustrated in Appendix B,
the appellant has not established that one of ordinary skill in the art at the time of the appellant’s
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