Appeal No. 2002-2175
Serial No. 09/060,960
prior art. The claimed identifying means are simply deemed to be
printed matter” (answer, page 6).
This latter position is unsound. Where printed matter is
not functionally related to its substrate, the printed matter
will not distinguish the invention from the prior art in terms of
patentability. In re Gulack, supra. Although the printed matter
must be considered, in that situation it is 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, a functional relationship clearly
exists between the printed matter (the text and graphical
indications identifying salient characteristics of the golf
glove) and the substrate (the golf glove package). Thus, the
printed matter limitations in the appealed claims must be
evaluated in terms of their patentable weight in assessing the
obviousness of the claimed invention.
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