Appeal 2006-3079
Application 10/708,033
unpatentable over Calhoun in view of Bouchal is sustainable on the basis of
Calhoun alone.1 Bouchal, relied on by the Examiner (Answer 5-6) as
evidence that it was known in card games at the time of Appellants’
invention to observe the legends and pictures on displayed cards and use
those legends and pictures to tell a story (see FF11), is superfluous.
Claims 25 and 26 additionally recite steps of telling a story within a
selected amount of time and providing a time keeper, respectively. Calhoun
teaches such (FF10).
The additional limitations recited in dependent claims 13 and 17-22
are directed to printed matter that is not functionally related to the playing
cards, as discussed above, and, thus, do not patentably distinguish the
claimed subject matter from Calhoun. See Ngai, 367 F.3d at 1339, 70
USPQ2d at 1864.
Appellants point out additional limitations recited in claims 14-16, 23,
and 242 allegedly not taught or suggested by Calhoun and Bouchal, either
alone or in combination (Appeal Br. 21-22, 24, and 25) but do not
specifically argue why these limitations patentably distinguish the claimed
subject matter from Calhoun. “The mere existence of differences between
the prior art and an invention does not establish the invention's
nonobviousness.” Where the gap between the prior art and Appellants’
1 In affirming a multiple reference rejection under 35 U.S.C. § 103, the
Board may rely on fewer than all of the references relied on by the Examiner
in an obviousness rationale without designating it as a new ground of
rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA
1966).
2 “A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).
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