Appeal No. 96-1827
Application 08/112,576
colour reads, for example, on any two subsets of Samuel’s black or white pieces, respectively. Thus,
the subject matter recited in claim 2 lacks novelty. Since lack of novelty is the ultimate or epitome of
obviousness (see In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982)), we shall
sustain the standing 35 U.S.C. § 103 rejection of claim 2, and of claims 3 and 19 which have been
grouped therewith pursuant to 37 CFR § 1.192(c)(7) (see page 6 in the brief).
We shall not sustain, however, the standing 35 U.S.C. § 103 rejection of claims 11, 12, 17 and
18. For the reasons discussed above, Waddington does not cure the failure of Samuels to teach or
suggest the particular game pieces required by these claims.
Finally, we shall sustain the standing 35 U.S.C. § 103 rejection of claims 7, 8 and 20 as being
unpatentable over Samuels in view of Wade. The appellant does not dispute the examiner’s
conclusion that it would have been obvious to one of ordinary skill in the art to provide Samuels’ chess
pieces with facial characteristics in view of the teachings of Wade. Rather, the appellant submits the
proposed combination would not meet the limitations in claims 7 and 8 because “[t]he fact that Wade’s
faces might be used to indicate direction does not teach using them to indicate direction. It is only with
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