Ex parte FIORI - Page 6

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

                first paragraph rejection are vague and indefinite.  We cannot                                                                
                agree, for the same reasons as were expressed immediately above.                                                              
                The rejection under 35 U.S.C.  112, second paragraph, also is                                                                
                not sustained.3                                                                                                               

                                         The Rejection Under 35 U.S.C.  103                                                                  
                         The examiner’s theory is that Scott discloses the claimed                                                            
                three stacked, transparent game boards but lacks the required two                                                             
                series of three different game pieces.  For this, the examiner                                                                
                looks to Time, which discloses a three dimensional chess game in                                                              
                which there are two series of at least three different game                                                                   
                pieces.  The examiner’s position apparently is that it would have                                                             
                been obvious to one of ordinary skill in the art to utilize the                                                               
                Time game pieces with the Scott stacked game boards.  Essential                                                               
                to the examiner’s conclusion is that the limitation that the                                                                  
                paths of the game boards are diagonal to the peripheral edge of                                                               

                         3 We do note, however, some matters in the claims which are                                                         
                worthy of comment.  We have interpreted the phrase “diagonally                                                                
                off from peripheral edges” in claim 11, and the similar                                                                       
                phraseology which appears in claim 22, to mean that the paths                                                                 
                diagonally intersect the peripheral edges.  We also note two                                                                  
                apparent errors in claim 11 which appear to be in need of                                                                     
                correction: In line 25 of the claim as presented in the amendment                                                             
                accompanying the Reply Brief, it would appear that “playing                                                                   
                field” should read --playing surface-- in both occurrences, and                                                               
                in line 26 that “peripheral shape” should read --peripheral edge-                                                             
                -, in order to have proper antecedent basis.                                                                                  

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