Ex parte PEPPEL - Page 15




          Appeal No. 1998-2848                                                        
          Application 08/398,862                                                      

          certificate of completion optionally including clues to solve               
          a next level of said puzzle."  These steps are directed to a                
          "useful, concrete and tangible result" of playing a puzzle                  
          game using ETCs.  We do not agree with the Examiner's                       
          conclusion that the steps are "ethereal."  The § 101 rejection              
          of claim 19 and its dependent claim 20 is reversed.                         


               NEW GROUND OF REJECTION UNDER 37 CFR § 1.196(b)                        
               Independent claim 21 and dependent claims 22-37                        
               We enter a new ground of rejection under 37 CFR                        
          § 1.196(b) as to claim 21 and its dependent claims 22-37 under              
          35 U.S.C. § 112, second paragraph.                                          
               Claim 21 recites the single step of "a dissociating a                  
          computer program, consisting of a plurality of electronic                   
          trading cards (ETCs), each ETC corresponding to a                           
          disassociated computer code segment and having an electronic                
          format that supports card scarcity and card authenticity."  In              
          our opinion, the phrase "a dissociating a computer program" is              
          indefinite under 35 U.S.C. § 112, second paragraph.  It cannot              
          be determined whether claim 21 intends to recite "dissociating              
          a computer program" or "a dissociating computer program."  In               


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