Appeal No. 2004-0089 4
Application No. 09/949,327
letter having the first and second areas are so arranged as be visible through the first and
second window openings respectively. See column 6, lines 37-41, and column 7, lines
31-38. It is evident that the second opening may be smaller than the first opening. See
Figures 1 and 3. Luftig differs only from the claimed subject matter as being directed to a
business card as opposed to a greeting card.
As to the first theory of rejection that the only distinction between Luftig and the
claimed subject matter lies in the ultimate intended use of the card as a “greeting” card,
what is required to establish is “the existence of differences between the appealed claims
and the prior art sufficient to establish patentability.” See In re Gulack, 703 F.2d 1381,
1386, 217 USPQ 401, 404 (Fed. Cir. 1983). As stated therein”the critical question is
whether there exists any new and unobvious functional relationship between the printed
matter and the substrate. Id. Stated otherwise whether the term “greeting” used in the
preamble to the claim creates a new and unobvious functional relationship between the
printed matter and the substrate.
On the record before us, the printed subject matter utilized by Luftig displays a
message in the same manner as in the card of the claimed subject matter. Similarly, the
smaller area of Luftig contains a distinctive design, i.e., a number or sequence of numbers
surrounded by a decorative border constitutes a distinctive design. Whether the distinctive
design is something other than a number is irrelevant to the critical question before us, as
regardless of the specific distinctive design before us, the functional relationship between
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