Appeal No. 96-1827
Application 08/112,576
The appellant submits that the subject matter recited in claims 1, 4 through 6 and 10 is not
anticipated by Samuels because this reference does not meet the intended use limitations in these claims
or the recitation in parent claim 1 of “direction indicating means for indicating the orientation of the piece
relative to a player and hence the ownership of the piece throughout the course of the game.”
Considering the latter point first, the “direction indicating means” recitation is a means plus
function limitation which must be construed in accordance with the sixth paragraph of 35 U.S.C. § 112,
second paragraph, as covering the corresponding structure in the specification and equivalents thereof.
See In re Donaldson Co. Inc., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1849-50 (Fed. Cir. 1994).
One of the structures in the appellant’s specification which corresponds to this “means” is a base 10
having a front 14 and rear 16 which are mutually asymmetrical (see pages 3 and 4). Samuels’
instructional indicia carrying member, which as shown in Figures 2 and 4 has a front and rear which are
mutually asymmetrical, embodies such a base. Moreover, due to its asymmetrical shape, the Samuels
instructional indicia carrying member is clearly capable, under principles of inherency, of indicating the
orientation of the piece relative to a player and hence the ownership of the piece throughout the course
of the game as recited in claim 1. Thus, Samuels’ instructional indicia carrying member constitutes a
direction indicating means to the extent that such is recited in claim 1 and further defined in dependent
claims 4 through 6.
As for the intended use limitations in claims 1, 4 through 6 and 10, it is not apparent, nor has the
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007