Appeal No. 2004-0190 Page 6
Application No. 09/479,531
peripheral shape of the structural unit. It therefore is our conclusion that the subject
matter of claim 28 reads on elements 554 of Sihra, and the claim is anticipated.
The Section 102 rejection of claim 28 is sustained.
The Rejections Under Section 103
The first of these is that claims 14-16 and 24 would have been obvious2 to one of
ordinary skill in the art in view of the combined teachings of Katerba and Staples.
Among the structure recited in independent claim 14 is “a plurality of distinct movable
game pieces, each . . . having defined range values that define movement parameters
for said movable game piece,” and a movement measuring device with a continuous
surface having body indicia positioned thereon and constructed to roll along a playing
surface to measure the range values of the movable game pieces. The examiner has
found all of the structure in claim 14 to be disclosed by Katerba except for the
continuous surface on the measuring device, considering that “[v]ery little weight is
given to the feature of each game piece having range values since this is an apparatus
claim and not a method claim” (Answer, page 7). As for the measuring device, the
2The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
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