Ex Parte Shanahan - Page 11



                    Appeal No. 2004-2334                                                                                                                                  
                    Application No. 09/888,145                                                                                                                            

                              Mueller teaches all limitations of these claims except                                                                                      
                              that it does not teach perforation on strips for                                                                                            
                              separation of cards.  Reynolds teaches perforation on                                                                                       
                              strips for card separation.  In order to detach cards                                                                                       
                              from the strip, it would have been obvious to use                                                                                           
                              perforation.  One of ordinary skill in the art at the                                                                                       
                              time the invention was made would have used perforation                                                                                     
                              for easy separation of cards from the strip.                                                                                                
                    Like appellant (brief, pages 9-10), we find no teaching,                                                                                              
                    suggestion or incentive for combining the applied references in                                                                                       
                    the manner urged by the examiner; that is, no reason or                                                                                               
                    motivation for attempting to provide perforations of the type                                                                                         
                    claimed by appellant in the paper strips of Mueller's cookie game                                                                                     
                    wherein a segment of a written composition is contained on each                                                                                       
                    of the paper strips.  Except for hindsight afforded by first                                                                                          
                    having read appellant's application, the examiner has no factual                                                                                      
                    basis whatsoever for providing the paper strips in Mueller with a                                                                                     
                    hand unit of cards, where each of the cards bears one                                                                                                 
                    predetermined suit and denomination, and then further providing a                                                                                     
                    perforation between each of the cards on the paper strip to allow                                                                                     
                    selective separation of each of the cards from the strip.  For                                                                                        
                    these reasons, we will not sustain the examiner's rejection of                                                                                        
                    claims 2, 7, 9 and 12.                                                                                                                                



                                                                                   1111                                                                                   




Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007