Appeal No. 2006-1451
Application No. 08/802,472
6) the examiner is speculating as to the linkage between the article, the
activity and the iconic package, rather than showing it in the reference
(citing In re Bond) [see Brief at p. 19]; and
7) Gossard does not teach marketing the iconic container together with
photographs. [see Brief at p. 19]
Before addressing the appellant’s arguments concerning the rejections, we first
note that this claim, and indeed all of the claims, contain the limitations that an icon be
visually suggestive of an activity, and that the article be used during that activity. None
of the independent claims further constrain the limits of visual suggestion or usage.
Therefore the claim scope is as broad as the imagination of any individual making the
association and performing the usage.
As to the appellant’s first argument, while the examiner may be presenting
multiple alternative theories under which Gossard may be interpreted, multiple theories
do not negate novelty, but rather provide additional support for the argument. We note
that Gossard’s iconic representations of several sports playing pieces, such as a
baseball, football and hockey puck, are each recognizable as such representations, and
each would suggest activities associated with each of their respective sports, including
the activity of referring to photographs, as in, for example, trading cards, having team
members associated with each of the respective sports. This set of linkages generally
corresponds to what the examiner was attempting to portray as a theory of anticipation
under Gossard. Therefore, the examiner’s presentation of multiple theories cannot be
the basis for negating the rejection.
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