Appeal No. 2000-1794
Application 08/901,171
matter is not functionally related to the substrate, it will
not distinguish the invention from the prior art in terms of
patentability. Although the printed matter must be considered,
in that situation it may not be entitled to patentable weight.
What is required is
the existence of differences between the claims and the prior
art sufficient to establish patentability. The bare presence
or absence of a specific functional relationship, without
further analysis, is not dispositive of obviousness. Rather,
the critical question is whether there exists any new and
unobvious functional relationship between the printed matter
and the substrate. Id.
In the present case, claims 1 and 11 do indeed recite a
specific functional relationship between the response
solicitive and responsive “printed matter” and the tape
“substrate,” i.e.
that the response solicitive matter be printed on the visible
gripping portion of the tape and that the responsive matter be
printed on the spaced hidden portion of the tape. The
examiner’s conclusion that it would have been obvious to
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