Appeal 2007-2005
Application 10/066,110
1 The Appellant contends that the preamble limitation in claim 15 calling for the
2 game aid to be separate and apart from the electronic interactive game is clearly a
3 structural limitation, and that it is permissible for a method claim to specify
4 structural limitations insofar as they relate to elements used to carry out the steps
5 of the method. The Appellant also contends that the final rejection does not
6 attempt to establish the obviousness of claim 23. (Br. 7).
7 Thus, the issues pertinent to this appeal are
8 • Whether the rejection of claims 15-18, 21, and 22 under 35 U.S.C. § 102(b)
9 as anticipated by Yoshida is proper.
10 o In particular, how much patentable weight is to be afforded the
11 preamble limitation of separateness, and to the degree weight is
12 afforded, whether Yoshida is able to show that.
13 • Whether the rejection of claims 23, 24, 28, and 31 under 35 U.S.C. § 103(a)
14 as obvious over Yoshida is proper.
15 o In particular, whether the Examiner’s evidence concerning inserting a
16 separate processor is sufficient to demonstrate obviousness of the
17 invention as a whole.
18 • Whether the rejection of claim 29 under 35 U.S.C. § 103(a) as obvious over
19 Yoshida and Perkins is proper. The Appellant raises no contention
20 regarding this claim, and thus it stands or falls with its parent claim 23.
21 • Whether the rejection of claims 19, 20, and 25 under 35 U.S.C. § 103(a) as
22 obvious over Yoshida and Rosenberg is proper. The Appellant raises no
23 contention regarding these claims, and thus they stand or fall with their
24 parent claims 15 and 23.
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