Appeal No. 98-1017
Application 08/585,472
1089, 1096 (Fed. Cir. 1983). The content of the drawings may also be considered in determining
compliance with the written description requirement. Id.
Here, the disclosure of the application as originally filed would not reasonably convey to the
artisan that the appellant had possession at that time of a method wherein a player loses any
additional moves the player may have upon landing upon a square occupied by a piece of the other
player as is now recited in claim 7. The relevant portion of the original disclosure provides that
[w]hen a token captures an enemy token it cannot be moved from the square that was
occupied by the enemy token. A player must wait for his or her next turn of play to
move it from that square, even though the player may still have additional moves to
make [specification, page 6, emphasis added].
There is nothing in this passage, or in any other part of the original disclosure, which indicates that a
player loses any additional moves upon landing on an occupied square.
In summary:
a) the decision of the examiner to reject claims 1 through 7 under 35 U.S.C. § 103 is reversed;
and
b) a new 35 U.S.C. § 112, first paragraph, rejection of claim 7 is entered pursuant to 37 CFR
1.196(b).
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