Appeal No. 2001-1489 Page 9
Application No. 09/177,695
In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403 (Fed. Cir. 1983).
Rather, the critical question is whether there exists any new and unobvious
functional relationship between the printed matter and the substrate.
Id, at 703 F.2d 1386, 217 USPQ 404. In any subsequent proceeding wherein examiner
rejects this claim, the instruction step must be addressed and, in doing so, this critical
question answered. Examiner should be mindful, however, that
Where the printed matter is not functionally related to the substrate, the printed
matter 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.
In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1033 (Fed. Cir. 1994). In our view,
claim 1 does not set forth any functional relationship between the instructions and the
container. Accordingly, on that basis, we would agree that the printed matter does not
distinguish over the prior art combination.
Also, claim 1 requires that “the first and second compositions [be]
complementary products.” While, as we have stated, the grounds of rejection does not
address this, it is discussed in examiner’s response to appellants’ argument
(Examiner’s Answer, p. 5):
In response to the above argument, it is the position of the examiner that all the
references teaches [sic: teach] the concept of using the containers for different
cosmetic products (emphasis added). Therefore one of ordinary skill in the art would
be motivated to use the two different products that may be complimentary [sic:
complementary]. This is the case with the instant application.
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007