Appeal No. 2006-1562
Application No. 10/720,948
teaches a sports vision-training device with a “thickness
sufficient” to perform the various vision-interference functions
in independent claims 1, 10 and 18. (Brief, pages 7-9, 12 and
14). The Examiner bases her rejections on inherency by stating
the following: “It should be noted the thickness of the piece of
material inherently interferes with said individual’s ability to
look at any object including a sports objection [sic, object].”
(Final Office Action, pages 3-4, ¶¶ 3 and 4). In supporting her
inherency finding, the Examiner states that, since Appellant has
not claimed any specific thickness (i.e. no numerical value for
the thickness has been claimed), then both Maged and Micchia may
be considered to have “sufficient” thickness to interfere with
an individual’s vision. (Answer, page 7). As further rationale
for her inherency determination, the Examiner states that “any
material positioned under the eyes will cause some degree of
interference with the field of vision. . . .” (Answer, page 7).
A rejection based upon the doctrine of inherency requires
an examiner to provide a basis-in-fact and/or technical
reasoning to reasonably support a determination that the
allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art. Ex Parte Levy, 17 USPQ2d
1461, 1463-1464 (Bd. Pat. App. & Int. 1990). Moreover,
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