Appeal 2007-0472
Application 09/931,817
CONCLUSION OF LAW
On the record before us, the Examiner’s evidence and rationale is
sufficient to make out a prima facie cases of anticipation and obviousness
under 35 U.S.C. §§ 102(e) and 103. On the record before us and for the
foregoing reasons, Appellant has not shown that the Examiner erred in
concluding that prima facie cases of anticipation and obviousness are made
by Sporgis’ disclosure of a treasure hunt type game run from a website
having advertisements played on a web-enabled wireless communication
device receiving solvable clues.
Comment: The Specification is replete with references to goods and
services by their respective trade names or trademarks. The Examiner
should keep in mind that when a specification refers to goods and services
by their respective trade names or trademarks, a generic description must be
inserted in place of, or in addition to, a trade name or trademark. The
Manual of Patent Examining Procedure (MPEP) § 608.01(v) (2006)
provides guidelines by which the Specification may be amended to provide
the necessary generic description while avoiding questions of new matter.
See also In re Metcalfe, 410 F.2d 1378, 1382, 161 USPQ 789, 792 (CCPA
1969).
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