Ex Parte Wade - Page 6


                Appeal 2006-2705                                                                              
                Application 09/947,824                                                                        
                Cir. 1983).  The PTO may not disregard claim limitations comprised of                         
                printed matter.  See Gulack, 703 F.2d at 1384, 217 USPQ at 403; see also                      
                Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981).  However,                         
                the Examiner need not give patentable weight to descriptive material absent                   
                a new and unobvious functional relationship between the descriptive                           
                material and the substrate.  See In re Lowry, 32 F.3d 1579, 1583-84, 32                       
                USPQ2d 1031, 1035 (Fed Cir. 1994); In re Ngai, 367 F.3d 1336, 1338, 70                        
                USPQ 1862, 1864 (Fed. Cir. 2004).  We conclude that when the prior art                        
                describes all the claimed structural and functional relationships between the                 
                descriptive material and the substrate, but the prior art describes a different               
                descriptive material than the claim, then the descriptive material is non-                    
                functional and will not be given any patentable weight.  That is, we conclude                 
                that such a scenario presents no new and unobvious functional relationship                    
                between the descriptive material and the substrate.  In the instant case on                   
                appeal, we find that the invention of claims 1 through 21 recites non-                        
                functional descriptive material which does not provide a patentable                           
                distinction to the data structure as a structure.  In other words, we find that               
                the meaning attributed to the information stored in the data structure cannot                 
                be used to distinguish the claimed data structure from a prior art data                       
                structure.  Therefore, we conclude that the invention of claims 1 through 21                  
                is not patentably distinguishable from the data structure of the applied prior                
                art.                                                                                          
                      In view of the foregoing, the decision of the Examiner rejecting                        
                claims 1 through 21 under 35 U.S.C. § 103 is affirmed.                                        



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