Appeal No. 2006-1562
Application No. 10/720,948
functional relationship between the “logo” or “written indicia”
and the substrate of the sports vision-training device. Mere
ornamentation of the product will not impart patentability to an
otherwise old product.
Applying this legal principle to claims 7 and 8, it appears
that the “logo” and “written indicia” limitations are mere
ornamentation and are not functionally related to the substrate.
Appellant has disclosed nothing in his specification to indicate
that the “logo” or “written indicia” serves any function other
than ornamentation. As such, the “logo” and “written indicia”
may not be relied upon for patentability. Since all the
structural elements of claim 1, from which claims 7 and 8
depend, seem to be satisfied by both Morgan and Arnold, claims 7
and 8 appear to be anticipated by both Morgan and Arnold.
Claims 3-5, 11-13, 16 and 17 appear to be unpatentable
under 35 U.S.C. § 103(a) over Arnold in view of Morgan.4 Claims
3, 11 and 16 all require that the device be constructed of an
open-cell foam material. Arnold teaches that her patch is made
of a “biocompatible foamed plastic material”, but is silent as
4 As a matter of clarification, we point out that principles of
inherency and obviousness are not necessarily incompatible.
See, In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed.
Cir. 1995) and In re Skoner, 517 F.2d 947, 950, 186 USPQ 80,
82-83 (C.C.P.A. 1975).
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