Appeal No. 2005-1379
Application 09/734,601
We determine that appealed claim 6, dependent on appealed claim 5, specifies that the
puzzle board comprises at least a main section accommodating a 3 row x 18 column array of
cubic shaped pieces with a 2 row x 2 column array of such pieces on the upper lefty corner and a
2 row x 6 column array of such pieces on the upper right hand corner. These configurations do
not accommodate a single cubic shaped piece or an array of such pieces for 1 row x 1 column for
elements 1, hydrogen, and 2, helium, and the 1 row x 6 column for elements 87, 88, 89, 104,
105 and 106 shown in the main section of the table illustrated in specification Fig. 1, or the
separate 2 row x 14 column array for elements of the Cesium and Thorium series also shown
thereon. However, the open-ended term “comprising” opens claim 6 to encompass puzzle
boards that accommodate at least the specified configurations of cubic shaped pieces and further
accommodate any additional cubic shaped pieces in configurations attached to the specified
configurations or in separate configurations. See generally, Vehicular Technologies Corp. v.
Titan Wheel Int’l Inc., 212 F.3d 1377, 1383, 54 USPQ2d 1841, 1845 (Fed. Cir. 2000); Genentech
Inc. v. Chiron Corp., 112 F.3d 4954, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997); Exxon
Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir.
1995) (“The claimed composition is defined as comprising - meaning containing at least - five
specific ingredients.”); In re Baxter, 656 F.2d 679, 686 210 USPQ 795, 802 (CCPA 1981).
Turning now to the first ground of rejection, the examiner finds that Midgley would have
taught that a board having the periodic table displayed thereon as illustrated in Midgley FIGs.
6 and 7 which has arrays arranged as in the period table and “means for accommodating cards 25
having information thereon pertaining to the chemical elements,” but in comparison with
appealed claims 5 and 6 fail to disclose that “pieces 25 have a cubic shape” (final action, page 2).
The examiner further finds that Gaines would have disclosed “a teaching device comprising a
plurality of cubes which represent chemical elements” (id., pages 2-3). On this basis, the
examiner concludes that it would have been prima facie obvious to one of ordinary skill in this
art “to modify the device disclosed by Midgley by providing cube pieces to represent the
elements rather than cards” for that purpose as taught by Gaines (id., page 3).
Appellant submits that Gaines would not have suggested modifying the “wall chart of
Midgley into block shapes for each element and a puzzle board of shape reflecting the periodic
table of chemical elements,” pointing out that Gaines was issued prior to the conception of the
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