Appeal No. 96-1827
Application 08/112,576
d) claims 7, 8 and 20 under 35 U.S.C. § 103 as being unpatentable over Samuels in view of
Wade.
Reference is made to the appellant’s corrected brief (Paper No. 19) and to the examiner’s final
rejection and answer (Paper Nos. 7 and 14) for the respective positions of the appellant and the
examiner with regard to the merits of these rejections.
As a preliminary matter, it is noted that the appellant has raised as an issue in this appeal the
refusal of the examiner to enter the amendment filed subsequent to final rejection on January 9, 1995
(see page 4 in the brief). It is well settled, however, that the refusal of an examiner to enter an
amendment after final rejection is a matter of discretion which is reviewable by petition to the
Commissioner rather than by appeal to this Board. In re Mindick, 371 F.2d 892, 894, 152 USPQ
566, 568 (CCPA 1967). Accordingly, we shall not review or further discuss this matter.
Turning now to the standing 35 U.S.C. § 112, second paragraph, rejection, the examiner
considers claims 1 through 20 to be indefinite because
[in] Claim 1, the language to "ownership of the piece" without the board is confusing.
The claim is incomplete and inoperative without the board. In claims 1 and 13 "relative
to a player" is indefinite in that persons may not be positively recited in a claim. Claim
18, in line 2, "one kings" is confusing. Claim 20 must end with a period [final rejection,
page 2].
It is not apparent, however, nor has the examiner cogently explained, why the reference to
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