Appeal No. 2004-0190 Page 7
Application No. 09/479,531
examiner is of the view that it would have been obvious in view of Staples to modify the
measuring device of Katerba to have a continuous surface having indicia “in order to
allow a player to watch and evaluate a range being measured as the player is
performing the measurement” (Answer, page 7). The appellant takes issue with both of
these conclusions.
As explained on pages 8 and 9 of the appellant’s specification, the “defined range
values” are indicia, that is, printed matter, placed on each movable piece which indicate
the maximum amount of movement that each movable piece can make when moved in
the course of the game. As such, we agree with the appellant that the range values
cannot simply be ignored by the examiner. In this regard, differences between an
invention and the prior art cannot be ignored merely because those differences reside in
the content of printed matter. In re Lowry, 32 F.3d 1579, 1583, 32 USPQ2d 1031, 1034
(Fed. Cir. 1994) and In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403 (Fed. Cir.
1983). Where the printed matter is not functionally related to the substrate, it will not
distinguish the invention from the prior art in terms of patentability. Thus, in that
situation while the printed matter must be considered, it may 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 the issue of
obviousness. Rather, the critical question is whether there exists any new and
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