Appeal No. 1998-2847 Page 6
Application No. 08/521,873
In this case, we agree with the reasoning set forth in
the appellants' brief (pp. 7-10) that the examiner's bases for
this rejection are inappropriate. In that regard, we note
that the examiner did not respond to the appellants' argument.
Moreover, it is clear to us that (1) "the existing game board"
is not positively recited in the claims on appeal, and (2)
there is no per se rule that an applicant is not permitted to
reference a drawing figure.
For the reasons stated above, the decision of the
examiner to reject claims 1, 2, 12, 14 to 16, 27, 29, 38 and
40 to 42 under 35 U.S.C. § 112, second paragraph, is reversed.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 1, 2, 12, 14 to 16, 27, 29, 38 and 40 to 42 are
rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
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