Ex parte Lenkoff

Board of Patent Appeals and Interferences

Nov 29, 1999

08757749 (B.P.A.I. Nov. 29, 1999)

Application for patent filed November 26, 1996.1
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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROGER J. LENKOFF
_____________
Appeal No. 1998-2386
Application No. 08/757,7491
______________
HEARD: November 18, 1999
_______________
Before COHEN, ABRAMS, and GONZALES, Administrative Patent
Judges
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
claims 1 through 8, as amended subsequent to the final
rejection. Claim 9, the only other claim in the application,
Appeal No. 1998-2386
Application No. 08/757,749
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has been allowed (see Paper No. 10).
We REVERSE.
The subject matter on appeal is directed to a combined
sticker and invisible ink game including a booklet [3] having
at least one sheet containing an overall image printed
thereon, the overall image including a first visibly printed
portion [9] and a continuous second invisibly printed portion
[11], a contact pen [7] for developing the invisible image
portion to a visible image, and a third visible image portion
[17], e.g., a sticker, which can be located and associated
with the developed second overall image portion [11].
A copy of the appealed claims is appended to the Brief
(Paper No. 13).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Engel et al. (Engel) 4,714,275 Dec. 22,
1987
Kawashima 5,215,956 Jun.
01, 1993
Claims 1 through 8 stand rejected under 35 U.S.C. §
103 as being unpatentable over Engel in view of Kawashima.
Appeal No. 1998-2386
Application No. 08/757,749
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The full text of the examiner's rejection and the
responses to the arguments presented by appellant appear in
the Answer mailed March 10, 1998 (Paper No. 14), while the
complete
statement of appellant’s arguments can be found in the Brief
filed February 17, 1998 (Paper No. 13).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant’s specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we conclude that
the
§ 103 rejection cannot be sustained.
Claim 1, the only independent claim, calls for an
association and location identification game comprising: at
least one sheet of material having a first portion of less
than an overall image visibly printed thereon and “a second
portion physically associated as a continuity with said first
Appeal No. 1998-2386
Application No. 08/757,749
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portion of said overall image forming part thereof to assist
in completion of said overall image invisibly printed thereon
as a latent image”; marking means for developing the second
latent image portion; and a compatible visible image third
portion to be selected and movably associated with the
developed second image portion.
In rejecting claims under 35 U.S.C. 103 the examiner
bears the initial burden of presenting a prima facie case of
obviousness. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that
burden is met does the burden of coming forward with evidence
or argument shift to the applicant. Id. If the examiner
fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In order to
establish the prima facie obviousness of a claimed invention,
all the claim limitations must be taught or suggested by the
prior art. In re Royka, 490 F.2d 981, 985, 180 USPQ 580, 583
Appeal No. 1998-2386
Application No. 08/757,749
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(CCPA 1974). Appellant argues (Brief, pages 3 and 4) that
Engel and Kawashima, taken alone or in combination, neither
teach nor suggest a sheet of material having a first portion
of less than an overall image visibly printed thereon and a
second portion physically associated as a continuity with the
first portion of the overall image forming part thereof to
assist in completion of the overall image invisibly printed on
the sheet of material as a latent image and
a compatible visible image third portion to be selected and
movably associated with the developed second image portion.
The examiner, on the other hand, maintains that Engel
teaches a game book containing at least one sheet [18, Figure
2] having a character or first image “portion” [20] and a
plurality of half tone images or second image “portions” [24,
Figure 7] printed in areas [22] which “may be broadly
interpreted as a continuity with the first portion” and a
sticker or third image “portion” [12, Figures 3 and 4] which
the examiner contends is “broadly physically associated” with
the first image “portion” [20] (Answer, page 5).
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Application No. 08/757,749
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Claim 1 calls for “a first portion of less than an
overall image visibly printed” on a sheet of material and a
“second portion physically associated as a continuity with
said first portion of said overall image forming part thereof
to assist in completion of said overall image invisibly
printed [on the sheet of material] as a latent image”
(emphasis added). While it is true that claims are to be
given their broadest reasonable interpretation in proceeding
before the PTO, this interpretation must be consistent with
the specification and construed as those
of ordinary skill in the art would construe them. See In re
Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir.
1990); Specialty Composites v. Cabot Corp., 845 F.2d 981, 986,
6 USPQ2d 1601, 1604 (Fed. Cir. 1988) and In re Sneed, 710 F.2d
1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). Here, we
believe one of ordinary skill in the art would interpret the
“physically associated as a continuity with said first portion
of said overall image forming part thereof to assist in
Appeal No. 1998-2386
Application No. 08/757,749
The American Heritage Dictionary of the English Language (3rd ed.2
1992) defines “continuity” as “1.The state or quality of being continuous.
2.An uninterrupted succession or flow; a coherent whole.”
7
completion of said overall image” language of claim 1 as
requiring that the second image portion be a continuous or
uninterrupted part of the overall image. While we appreciate2
that Engel’s disclosure is highly relevant to the game set
forth in appellant’s claims, it is our view, based on the
above interpretation, that the half tone images [24] of Engel
are not continuous or uninterrupted parts of the character
[20] which assist in completion of the overall image.
Instead, as Engel explains, the character [20] is a cartoon
corresponding to the theme of the album (col. 2, lines 27-29)
while half tone images [24] may be scenes in a story told in
album [10] with each half tone image [24] being different from
the other, but with each corresponding to a full color scene
[26] printed on one of the various stickers [12] (id. at 34-
40). The fact that the characters [20] and half tone images
[24] are printed on the same sheet does not justify a finding
that the characters [20] and half tone images [24] of Engel
Appeal No. 1998-2386
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satisfy the “continuity” and “assist in completion of said
overall image” limitations of claim 1. The examiner’s
determination to the contrary is based on an unreasonable
interpretation of the claim language, in our view.
While not mentioned in the examiner’s explanation of the
rejection, we note that Engel does teach that the sheet [18]
also includes a drawing [66] which “may also be a picture with
portions obscured by a pattern 30 and by using viewer portion
42, the child can see the complete picture” (col. 6, lines 12-
15). However, Engel does not teach or suggest a third
portion, e.g., a sticker, which is selected and movably
associated with the obscured image portion of drawing [66].
We have also reviewed the Kawashima reference
additionally relied upon by the examiner in the rejection of
claims 1 through 8, but find nothing therein that makes up for
the deficiencies of Engel discussed above.
Since all the claim limitations are not taught or
suggested by the applied prior art, the examiner has failed to
establish a prima facie case of obviousness. Accordingly, we
will not sustain the standing § 103 rejection of claims 1
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Application No. 08/757,749
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through 8.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 1998-2386
Application No. 08/757,749
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