Appeal No. 98-1017
Application 08/585,472
board and playing piece capabilities employed by Andre. An integral part of this realism is the strategy
afforded by Andre’s step of allowing each player to arrange his or her pieces at will within designated
areas of the board at the beginning of the game. The examiner’s proposed modification of Andre’s
game to require the pieces of the opposing players to be initially positioned in mirror image runs counter
to the realistic tone sought by Andre. Moreover, the teachings of the references do not justify the
examiner’s implication that the initial playing piece arrangement step taught by Andre provides an
undesirable or unfair strategic advantage. In this light, we are constrained to conclude that the only
suggestion for combining Andre and Dozorsky in the manner proposed by the examiner stems from an
improper hindsight reconstruction of the claimed invention.
Accordingly, we shall not sustain the standing 35 U.S.C. § 103 rejection of claim 1 or of claims
2 through 7 which depend therefrom.
The following rejection is entered pursuant to 37 CFR § 1.196(b).
Claim 7 is rejected under 35 U.S.C. § 112, first paragraph, as being based on a specification
which fails to comply with the written description requirement of this section of the statute.
The test for determining compliance with the written description requirement is whether the
disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter, rather than the presence or absence of literal
support in the specification for the claim language. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ
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