Appeal No. 2000-2223
Application No. 09/040,271
The appropriate test for determining whether printed matter
limitations are entitled to patentable weight is set forth in In re
Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983),
wherein the court stated:
[w]here the printed matter is not functionally related to
the substrate, the printed matter will not distinguish
the invention from the prior art in terms of
patentability. Although the printed matter must be
considered, in that situation it may not be entitled to
patentable weight.
* * *
What is required is the existence of differences between
the appealed claims and the prior art sufficient to
establish patentability. The bare presence or absence of
a specific functional relationship, without further
analysis, is not dispositive of obviousness. Rather, the
critical question is whether there exists any new and
unobvious functional relationship between the printed
matter and the substrate. [Italics in original,
underlining added for emphasis; footnotes omitted.]
In Gulack, the court concluded that the claimed printed matter
should be given patentable weight because there was a functional
relationship between the printed matter and the substrate, in that
the printed matter was an endless sequence of digits and the
substrate was an endless band, such that the band “present[ed] the
digits as an endless sequence with no discrete beginning or end.”
Gulack, 703 F.2d at 1382, 217 USPQ2d at 402. Thus, the endless
nature of the printed matter exploited the endless nature of the
substrate.
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