Appeal No. 96-1455
Application No. 08/218,279
the relevant prior art. "In Gulack, this court concluded that
'the critical question is whether there exists any new and
unobvious functional relationship between the printed matter
and the substrate.'" Lowry, 32 F.3d at 1582, 32 USPQ2d at 1033
(citing In re Gulack, 703 F.2d 1381, 1386, 217 USPQ 401, 404
(Fed. Cir. 1983)). Here, the examiner stated that the
"intellectual content, e.g. the aspect ratio, does not carry
any patentable weight." (see Answer at page 4, lines 15-17.)
We disagree with this generic phrasing of this statement by
the examiner. Our reviewing court has stated that it is the
function of the claimed invention which must be considered in
evaluating patentability. Id. The inclusion of the aspect
ratio on the image print has a functional relationship to the
image print and functions to convey the information about the
image print to the customer or to a machine. Appellants have
further argued that neither Yoshiwaka nor Hicks provide an
"alphabetic description" on the image print of the designated
aspect ratio. We disagree with appellants. As the Examiner
found, Yoshiwaka teaches the inclusion of such information
with image prints, but not as an alphabetic description. (See
answer at page 4, lines 3-13.) Hicks clearly teaches the
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