Ex parte FIORI - Page 5




          Appeal No. 96-2890                                                          
          Application 08/318,781                                                      


                                       OPINION                                        
                        The Rejections Under 35 U.S.C.  112                          
               It is the examiner’s position in rejecting the claims under            
          the first paragraph of 35 U.S.C.  112 that no support is present           
          in the specification for the expressions of “paths extending                
          diagonally with respect to a peripheral edge of the playing                 
          surface” and “parallel lines extend diagonally off from a                   
          peripheral edge of a corresponding one of said game-boards.”  The           
          examiner also questions the meaning of “diagonally off,” which              
          edge of the game-board is being referenced, whether there is a              
          frame on the board of Figure 3, and whether Figure 3 corresponds            
          to each board in Figure 1.  See Answer, page 3.                             
               Our study of the disclosure of the invention leads us to the           
          conclusion that the examiner’s objections are not well taken.               
          From our perspective, one of ordinary skill in the art would have           
          had no difficulty in understanding the construction of the three            
          game boards, including the relationships of the various elements            
          of the claims with respect to one another, which the examiner has           
          questioned.  We will not sustain the rejection under 35 U.S.C.              
           112, first paragraph.                                                     
               The rejection under the second paragraph of Section 112 is             
          on the basis that the passages quoted above with regard to the              

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