Appeal No. 2004-1218
Application No. 09/956,195
teaches that it is advantageous for a game to be “folded”
(collapsible or disassembled) into a flat, very low profile
shipping or storage orientation for efficient bulk shipping and
storage (col. 2, ll. 55-61; col. 3, ll. 43-49). Therefore we
determine that the examiner has presented sufficient evidence to
support the disputed assertion.2
We additionally note that the limitation “wherein said tray
may be collapsed and packaged in a flat container when
disassembled” (emphasis added) as recited in claim 1 on appeal only
requires a capability of the tray to be collapsed or disassembled
but does not positively state that such action has occurred. See
In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32
(Fed. Cir. 1997); In re Casey, 370 F.2d 576, 579-80, 152 USPQ 235,
238 (CCPA 1967). Appellants have not provided any reasoning or
evidence establishing that the card viewer of Morse was not capable
of being collapsed or disassembled.
2Appellant strongly disputes the examiner’s citation of
Conville and Chapman for the first time in the Answer, without
denominating the rejection as a new ground of rejection or
reopening prosecution (Reply Brief, page 2; see the Answer,
paragraph bridging pages 4-5). However, this issue is
petitionable and not before us on appeal. See 37 CFR §
1.191(c)(2000); Manual of Patent Examining Procedure, §§§
1002.02(d), 1208.01, and 2144.03, 8th ed., Aug. 2001.
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