Appeal 2006-3079
Application 10/708,033
Significantly, Dwyer describes the “differentiating feature,” in whatever
form it may take, as differentiating the cards of one set from the cards of the
other set. Further, each set forms a complete alphabetic sequence (FF3). As
such, each set of cards conforms to the ordinary and customary usage of the
term “suit” within the context of playing cards, namely, “a group of similar
things forming a set or series.”
We therefore conclude that Appellants have failed to demonstrate the
Examiner erred in rejecting claims 1 and 11 as anticipated by Dwyer. The
rejection is sustained.
Appellants’ contention that the additional features recited in claims 2
and 3 are not disclosed by Dwyer (Appeal Br. 9 and 12) likewise is unsound.
Specifically, each of the sets of alphabetic cards has 26 cards, the second suit
thus having the same number of cards as the first suit. Appellants have
failed to demonstrate the Examiner erred in rejecting claims 2 and 3 as
anticipated by Dwyer. The rejection of claims 2 and 3 is sustained.
The only difference between the subject matter of claims 4-10 and
Dwyer resides in the indicia printed on the cards. Where the only difference
between the claimed subject matter and the prior art resides in printed matter
and the printed matter recited in the claim is not functionally related to the
substrate on which it is printed, the printed matter does not distinguish the
subject matter of the claim from the prior art in terms of patentability and
rejection of the claim under 35 U.S.C. § 102 as anticipated by the prior art is
appropriate. In re Ngai, 367 F.3d 1336, 1338-39, 70 USPQ2d 1862,
1863-64 (Fed. Cir. 2004).
We find that, in Appellants’ invention, the legends and pictures
printed on the playing cards are not functionally related to the substrate, that
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