Appeal No. 2005-1379
Application 09/734,601
periodic table, and thus, there is no teaching in the reference of the correspondence between one
cubic piece and an element of the periodic table (brief, pages 6-7). Appellant further argues in
this respect that “to arrange the cubes of Gaines into a period chart would violate the express
teachings of Gaines” to arrange cubes representing elements into molecules (id., pages 7-8).
Appellant further submits that the applied prior art does not suggest “to modify the
compartments of Gaines into the shape and size required for a periodic table” because the
compartments of Gaines are used to “gather” and store the cubic pieces for each element, citing
col. 1, l. 53, and col. 2, ll. 31-36 of the reference (brief, page 9). Appellant thus argues that
Midgley would not benefit by “making compartments to hold cubic pieces into the shape of the
period table” (id., page 10). Appellant also submits that the combination of Midgley and Gaines
would result in the claimed invention because Gaines would have taught that one compartment
holds all of the cubes for one chemical element (id., pages 10-11). On this basis, appellant
contends that even if Gaines did teach “that a puzzle board of periodic shape, such as the
applicant’s, can be made” there is no teaching in Gaines suggesting that it would function like
appellant’s since the cubic shapes of the reference are all of different sizes and “the cubes of the
applicant’s invention must be all of the same size so that all the elements may fit in the period
table that is defined by the contours of the . . . puzzle board of the invention” (id., page 11).
Appellant submits that “the specific shaped arrays that are described in detail in claim 6
are not shown or suggested by” Gaines and Midgley, contending that Gaines does not describe
the period table and the arrays specified in claim 6 “reflect those particular patterns that are
found in the modern day periodic table;” and that the compartments of Gaines are used “for
storage and not to represent the shape of the various sections of the periodic table (id., pages 11-
12). Appellant finally submits that combination of references would not produce the claimed
invention because the cubes of Gaines are of dissimilar size and there are a plurality of cubes for
each element, and Midgley “has to do with a wall chart and does not concern itself with cubic
shapes” (id., pages 13-14).
The examiner responds, with respect to appealed claim 5, that “[b]oth Midgley and
Gaines are directed to systems for teaching chemistry” and that “Gaines is not being read in light
of Midgley” (answer, pages 3-5). The examiner argues that Midgley teaches the concepts that
appellant contends is absent in Gaines, pointing out that Midgley discloses “replaceable pieces
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