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 5Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007