Appeal No. 1997-0449
Application 08/380,244
there appears to be no dispute that each of the primary
references (May, Morgan, McCorkle and Tajima) constitutes a
roofing shingle comprising (1) and (2). As to (3), we hold
that the requirement that the planographic indicia identifying
the shingle as to at least one parameter of its manufacture
sufficiently functionally relates the printed matter
implicitly comprising the claimed planographic indicia to the
shingle to which it is affixed, such that this indicia
represents a difference or distinction over the primary
references which must be given weight in considering the
obviousness of the appealed claims. See In re Gulack, 703
F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). As to
the secondary references relied upon by the examiner in
rejecting the appealed claims, Hoffman pertains to building
insulation that includes printed information (e.g., the
manufacturer’s name) on portions of the insulation’s backing,
while each of Small and Simon teaches release material affixed
to a product, wherein the release material has printed thereon
instructions relating to installation of the product. For the
purposes of this appeal, we will assume that these reference
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