Appeal No. 2006-1562
Application No. 10/720,948
was made, to a person of ordinary skill in the art, to have used
Morgan’s hydrocolloidal adhesive material as the adhesive for
Arnold’s adhesively attached eye patch in order to increase the
comfort of the user and permit the patch to adhere better to the
individual’s skin as taught by Morgan.
We note that the adhesive claimed in claim 12 does not
require the ability to transfer moisture. As such, Arnold,
alone, would teach the feature of claim 12 because Arnold
teaches using an adhesive to attach the eye patch to the face of
the individual. (Column 3, lines 34-39). Because of the
dependency of claim 12 on 11, claim 12 would be considered for
rejection under § 103 over Arnold in view of Morgan. However,
since claim 12 is taught by the primary reference Arnold alone,
no additional showing of motivation to combine Morgan’s
teachings with Arnold would be required.
Therefore, in response to this remand, the Examiner must
determine, and make of record the results of this determination,
the following: (1) the propriety of rejecting at least claims 1,
3-5, 7, 8 and 9 under 35 U.S.C. § 102(b) as being unpatentable
over Morgan, (2) the propriety of rejecting at least claims 1,
2, 7, 8, 9, 10 and 15 under 35 U.S.C. § 102(b) as being
unpatentable over Arnold, and (3) the propriety of rejecting at
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