Appeal No. 96-1827
Application 08/112,576
“ownership of the piece” in claim 1 is confusing, or why this claim, which is directed to “A set of pieces
for a modified version of chess” is incomplete and inoperative without the recitation of a board.
Moreover, and contrary to the examiner’s determination, the language “relative to a player” in claims 1
and 13 does not incorporate players or persons as part of the claimed subject matter. Finally, although
the examiner’s criticisms of claims 18 and 20 are well taken, they involve mere typographical errors
which, while certainly deserving of correction, are not serious enough to render the scope of these
claims unclear.
Accordingly, we shall not sustain the standing 35 U.S.C. § 112, second paragraph, rejection of
claims 1 through 20.
As for the standing 35 U.S.C. § 102(b) rejection of claims 1, 4 through 6, 9, 10 and 13
through 16 as being anticipated by Samuels, anticipation is established when a single prior art reference
discloses, expressly or under principles of inherency, each and every element of a claimed invention.
RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984). In other words, there must be no difference between the claimed invention and the reference
disclosure, as viewed by a person of ordinary skill in the field of the invention. Scripps Clinic &
Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir.
1991). It is not necessary that the reference teach what the subject application teaches, but only that
the claim read on something disclosed in the reference, i.e., that all of the limitations in the claim be
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