Appeal 2007-1928
Application 10/163,282
different indicia, we remind Appellants that nonfunctional descriptive material
cannot render nonobvious an invention that is otherwise obvious over the prior art.
In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)(when
descriptive material is not functionally related to the substrate, the descriptive
material will not distinguish the invention from the prior art in terms of
patentability). Our reviewing court and its predecessor have frequently cautioned
the Patent and Trademark Office (PTO) that all claim limitations must be
considered when determining patentability over the prior art. In re Lowry, 32 F.3d
1579, 1582-83, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994) quoting In re Gulack 703
F.2d 1381, 1384, 217 USPQ 401, 403-04 (Fed. Cir. 1983). Furthermore, the
Federal Circuit has cautioned against a liberal use of a printed matter rejection. Id,
32 F.3d at 15821-83, 32 USPQ2d at 1034. Nonetheless, we recognize in the
instant case the classic printed matter situation in which Appellants are advancing
patentability based on the content of individual indicia on the bits of material or
confetti or the differences in these indicia one from another. These printed matter
cases “dealt with claims defining as the invention certain novel arrangements of
printed lines or characters, useful and intelligible only to the human mind.” Id.
quoting In re Bernhart, 417 F.2d 1395, 1399, 163 USPQ 611, 615 (CCPA 1969).
Accordingly, although we will not disregard any claim limitations and will assess
the claimed invention as a whole, we will follow the Federal Circuit’s guidance as
in the Gulack decision and will “not give any patentable weight to printed matter
absent a new and unobvious functional relationship between the printed matter and
the substrate.” Id. (Emphasis supplied).
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