Ex Parte EPSTEIN - Page 4




                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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