Appeal No. 2006-1562
Application No. 10/720,948
Viewed from this perspective, independent claims 1 and 10 seem
to be anticipated by Arnold under the principles of inherency.
Additionally, the Examiner should consider the
applicability of Morgan and Arnold to the dependent claims. For
example, it appears that Morgan renders claims 3-5 and 9
anticipated. Morgan teaches constructing his patch using open-
cell foam (claim 3) with a hydrocolloidal adhesive backing
material (claim 5). (Column 2, lines 29-40). The adhesive and
open-cell foam wick moisture away from the user and through the
foam material for evaporation from the surface of the patch
(claim 4). (Column 2, lines 29-40, Column 4, lines 33-43).
Additionally, claim 9 appears to be anticipated by Morgan
because Morgan’s eye patch, as with any object, is inherently
capable of being thrown away (i.e. “disposable”).
Arnold appears to anticipate dependent claims 2, 9 and 15.
Regarding claims 2 and 15, Arnold’s patch, as explained above,
has the same thickness as Appellant’s device. While the
positioning of the patch is considered to be an intended use,
nevertheless, Arnold’s patch is capable of being positioned on
the face of a user such that the maximum disclosed thickness
reasonably appears to be inherently capable of directing a
user’s vision up and toward a field of play and players thereon
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