Appeal No. 1998-0252
Application No. 08/555,795
therefore it is not entitled to patentable weight (Answer,
page 5). The appellant argues that it is functionally related
to the extent that is required by the case law, and therefore
the examiner’s position is in error.
From our perspective, however, the case law cited by the
appellant in support of his position dictates the opposite
result. Basic guidance is provided by In re Miller, where 3
the invention solved the problem of quickly measuring out
fractions of recipes, such as one-half of that which is
specified, by placing quantity measuring indicia on a
receptacle in a selected ratio that is proportional to, but
different from, the actual quantity present in the receptacle.
As in the present situation, the examiner refused to give the
indicia patentable weight because it was printed matter,
rejecting the claims as being unpatentable over any ordinary
measuring vessel. In its reversal, the court provided the
following explanation:
The fact that printed matter by itself is not
patentable subject matter, because non-statutory, is
no reason for ignoring it when the claim is directed
to a combination. Here there is an new and
unobvious functional relationship between a
3418 F.2d 1392, 164 USPQ 46 (CCPA 1969).
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