Ex parte Fiori

Board of Patent Appeals and Interferences

Dec 29, 1997

08318781 (B.P.A.I. Dec. 29, 1997)

Application for patent filed October 17, 1994. According1
to appellant, this application is a 371 continuation of
International Application No. PCT/IT93/00076 filed July 20, 1993.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GASTONE FIORI
__________
Appeal No. 96-2890
Application 08/318,7811
__________
ON BRIEF
__________
Before MEISTER, ABRAMS and CRAWFORD, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 11 and 22, which constitute all of the claims of
record in the application, the other claims having been canceled.
Appeal No. 96-2890
Application 08/318,781
2
The appellant's invention is directed to a multi-layered
board game. The subject matter before us on appeal is
illustrated by reference to claim 11, which reads as follows:
11. A board game, comprising;
a support structure;
three transparent game-boards joined with said support
structure so as to be vertically separated from one another and
such that an upper playing surface of each game-board defines a
respective one of a first, second and third horizontal plane,
wherein the external shape of the upper playing surface of each
game board is defined by a multi-sided peripheral edge, and each
of said game-boards having two sets of parallel paths with said
sets being arranged orthogonal to each other on the playing
surfaces with a plurality of the paths extending diagonally off
from peripheral edges of the playing surface on which said paths
are formed;
a first series of game pieces which first series
includes a first, a second and a third game piece type with the
three game piece types being different;
a second series of game pieces that is visually
distinct from said first series and includes first, second and
third game piece types which correspond with the first, second
and third game piece types of said first series, and
wherein said support structure includes a column positioned
centrally with respect to said first, second and third game
boards, and wherein each of the game boards provides a similar
sized playing field and each playing field has a similarly shaped
peripheral shape.
THE REFERENCES
Appeal No. 96-2890
Application 08/318,781
This is a new rejection made for the first time in the2
Examiner’s Answer.
3
The references relied upon by the examiner to support the
final rejection are:
Scott 4,883,278 Nov. 28, 1989
THREE-DIMENSIONAL CHESS, Time, February 4, 1952, page 15 (Time).
THE REJECTIONS
Claims 11 and 22 stand rejected under 35 U.S.C. § 112, first
paragraph, as being based upon a specification which fails to
provide support for the invention as now claimed.2
Claims 11 and 22 also stand rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the subject matter which the appellant regards
as the invention.2
Claims 11 and 22 further stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Scott in view of Time.
The rejections are explained in the Examiner's Answer and in
Paper No. 8.
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
Appeal No. 96-2890
Application 08/318,781
4
Appeal No. 96-2890
Application 08/318,781
5
OPINION
The Rejections Under 35 U.S.C. § 112
It is the examiner’s position in rejecting the claims under
the first paragraph of 35 U.S.C. § 112 that no support is present
in the specification for the expressions of “paths extending
diagonally with respect to a peripheral edge of the playing
surface” and “parallel lines extend diagonally off from a
peripheral edge of a corresponding one of said game-boards.” The
examiner also questions the meaning of “diagonally off,” which
edge of the game-board is being referenced, whether there is a
frame on the board of Figure 3, and whether Figure 3 corresponds
to each board in Figure 1. See Answer, page 3.
Our study of the disclosure of the invention leads us to the
conclusion that the examiner’s objections are not well taken.
From our perspective, one of ordinary skill in the art would have
had no difficulty in understanding the construction of the three
game boards, including the relationships of the various elements
of the claims with respect to one another, which the examiner has
questioned. We will not sustain the rejection under 35 U.S.C.
§ 112, first paragraph.
The rejection under the second paragraph of Section 112 is
on the basis that the passages quoted above with regard to the
Appeal No. 96-2890
Application 08/318,781
We do note, however, some matters in the claims which are3
worthy of comment. We have interpreted the phrase “diagonally
off from peripheral edges” in claim 11, and the similar
phraseology which appears in claim 22, to mean that the paths
diagonally intersect the peripheral edges. We also note two
apparent errors in claim 11 which appear to be in need of
correction: In line 25 of the claim as presented in the amendment
accompanying the Reply Brief, it would appear that “playing
field” should read --playing surface-- in both occurrences, and
in line 26 that “peripheral shape” should read --peripheral edge-
-, in order to have proper antecedent basis.
6
first paragraph rejection are vague and indefinite. We cannot
agree, for the same reasons as were expressed immediately above.
The rejection under 35 U.S.C. § 112, second paragraph, also is
not sustained.3
The Rejection Under 35 U.S.C. § 103
The examiner’s theory is that Scott discloses the claimed
three stacked, transparent game boards but lacks the required two
series of three different game pieces. For this, the examiner
looks to Time, which discloses a three dimensional chess game in
which there are two series of at least three different game
pieces. The examiner’s position apparently is that it would have
been obvious to one of ordinary skill in the art to utilize the
Time game pieces with the Scott stacked game boards. Essential
to the examiner’s conclusion is that the limitation that the
paths of the game boards are diagonal to the peripheral edge of
Appeal No. 96-2890
Application 08/318,781
7
the playing surfaces is “printed matter” which is “not limiting,”
and he has ignored it in setting out this rejection. See Paper
No. 8, page 3.
We agree with the appellant that this position on the part
of the examiner is in error, in that the claimed paths do not
merely provide printed information, but are an integral part of
the game board structure. The limitation is present in both
claims, and it clearly is not taught by either of the applied
references. Such being the case, a prima facie case of
obviousness with regard to the subject matter of claims 11 and 22
has not been established, and we will not sustain the Section 103
rejection.
Appeal No. 96-2890
Application 08/318,781
8
SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 96-2890
Application 08/318,781
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