Appeal No. 2003-0355
Application No. 09/217,725
not affect the recited displaying steps. If the printed matter
encompasses a new and unobvious functional relationship between
the printed matter and the substrate, the limitation must be
given patentable weight. See In re Lowry, 32 F.3d 1579, 1582, 32
USPQ2d 1031, 1034 (Fed. Cir. 1994) (citing In re Gulack, 703 F.2d
1381, 1384, 217 USPQ 401, 403). In fact, displaying different
versions of the item name having different word arrangements is
specific information that has technological value and constitutes
a new and non-obvious functional relationship between each
version and the way an item name is displayed and searched during
the selection process.
Therefore, assuming, arguendo, that it would have been
obvious to combine Walter and Humble, as held by the Examiner,
there would not have been any teaching or suggestion that
different versions of the item names are displayed under any of
the many hierarchies of groups and classes, as recited in
independent claims 1, 7 and 12.2 Additionally, as discussed
2 We note the Examiner’s reliance on the Manual of Patent Examining
Procedure in an attempt to allege that including multiple listings of items in
different word arrangements is generally well known (answer, page 8). This
argument, which is presented for the first time in the response to arguments
section of the answer, and apparently presented as an attempt to introduce new
evidence in support of the previously made arguments does, in fact, constitute
a new ground of rejection prohibited by 37 C.F.R. § 1.193(a)(2). If this
evidence is deemed material to the patentability of the claims, reopening of
the prosecution would have been the appropriate option that could have
properly placed the issue before this panel in case of a subsequent appeal.
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007