Appeal No. 2001-0052
Application No. 09/229,216
By looking at the differences between the instant claimed
subject matter and the prior art, the examiner may actually be
basing the rejection on 35 U.S.C. 103. To the extent that
this may be the case, it is clear that the differences between
an invention and the prior art cited against it (in this case,
a “well known flash reflector”) cannot be ignored merely
because those differences reside in the content of the printed
matter. Thus, one cannot dissect a claim, excise the printed
matter (in this case, the “film identifying indicia”) from it,
and declare the remaining portion of the mutilated claim to be
unpatentable. In re Gulack, 217 USPQ 401, 403 (Fed. Cir.
1983). The claim must be read as a whole.
In this case, reading the claim as a whole discloses that
the claim is directed to a one-time-use camera which
comprises, inter alia, a filmstrip and an electronic flash
with a flash reflector wherein the flash reflector is further
defined as having certain depressed portions to form a
readable message that constitutes film identifying indicia.
Now, if the printed matter, i.e., film identifying
indicia, is not functionally related to the substrate, it is
true that the printed matter will not distinguish the
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