Appeal No. 2004-0190 Page 8
Application No. 09/479,531
unobvious functional relationship between the printed matter and the substrate. In re
Gulack, supra, 703 F.2d at 1385, 217 USPQ at 404.
From our perspective, there is a functional relationship between the defined
range values and the movable game pieces inasmuch as they indicate the movement
capability of each piece and thus are indispensable to the playing of the game. Since
the examiner has not provided evidence that such a relationship would have been
obvious to one of ordinary skill in the art, the rejection is fatally defective at this point for
failing to establish a prima facie case of obviousness with regard to the claimed subject
matter.
Another deficiency also exists in the rejection. Katerba discloses a measuring
device which is attached to a golf flag stick to allow the distance to the hole of each ball
hit to the green to easily be measured to facilitate the measurement in a “closest to the
hole” competition (column 1). The examiner has taken the position that the golf balls hit
to the hole in this game constitute the claimed “movable game pieces,” a conclusion
which the appellant challenges. We find ourselves in agreement with the appellant that
the Katerba golf balls are not “movable game pieces having defined range values that
define movement parameters for the said movable game piece,” in that their movement
in the game disclosed by this reference is not in accordance with defined movement
parameters but is based upon such unpredictable factors as player skill and the effect of
the irregularities of the playing surface upon the ball once it contacts the ground.
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