Appeal 2006-2109
Application 10/680,678
1 using the technique is obvious unless its actual application is beyond that person’s
2 skill.” id. “Under the correct analysis, any need or problem known in the field of
3 endeavor at the time of invention and addressed by the patent can provide a reason
4 for combining the elements in the manner claimed.” Id at 1732, 82 USPQ2d at
5 1397.
6 Nonfunctional Descriptive Material
7 Descriptive material can be characterized as either “functional descriptive
8 material” or “nonfunctional descriptive material.” Exemplary “functional
9 descriptive material” consists of data structures2 and computer programs, which
10 impart functionality when employed as a computer component. “Nonfunctional
11 descriptive material” includes but is not limited to music, literary works and a
12 compilation or mere arrangement of data.
13 When presented with a claim comprising descriptive material, an Examiner
14 must determine whether the claimed nonfunctional descriptive material should be
15 given patentable weight. The Patent and Trademark Office (PTO) must consider
16 all claim limitations when determining patentability of an invention over the prior
17 art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). The
18 PTO may not disregard claim limitations comprised of printed matter. See
19 Gulack, 703 F.2d at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S.
20 at 191, 209 USPQ at 10. However, the examiner need not give patentable weight
21 to descriptive material absent a new and unobvious functional relationship between
22 the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84,
2 The definition of “data structure” is “a physical or logical relationship among
data elements, designed to support specific data manipulation functions.” The
13
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