Appeal No. 2004-0269 Page 5
Application No. 09/589,866
combined teachings of Peckham and Luciano would have motivated one of ordinary skill
in the art to modify Peckham to arrive at the claimed subject matter. At best, Luciano
might have suggested modification of Peckham’s disks to provide thereon a query and a
microchip programmed with an appropriate response to the query and the use of a
reader, such as Luciano’s microchip reader 11, with the educational device of Peckham
to read and display the answer programmed into the microchip. This would not result in
appellant’s claimed invention.
For the foregoing reasons, we conclude that the combined teachings of Peckham
and Luciano are insufficient to have suggested the subject matter of appellant’s
independent claims 1, 7 and 11. Thus, we cannot sustain the examiner’s rejection of
these claims or claims 4, 5, 8-10 and 12-17 depending therefrom.
REMAND TO THE EXAMINER
Pursuant to our authority under 37 CFR § 1.196(a), we remand this application to
the examiner for consideration of the following and appropriate action with respect
thereto.
Appellant’s claim 1 recites a key ring with a key and an attached tag, the tag
presenting an educational challenge displayed on a first surface and an answer
appropriate to the challenge which is normally concealed when the challenge is visible,
such as an answer displayed on the opposite surface of the tag. This claim, unlike
independent claims 7 and 11, is not limited to a tag having a vocabulary word on one
side and the definition thereof on the opposite side and would appear to be met by a
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