Appeal No. 2004-2114 Page 4
Application No. 09/808,122
Our reviewing court has stated that where the differences between the claimed
invention and the prior art resides in printed matter, the critical question is whether there
exists any new and unobvious functional relationship between the printed matter and
the substrate. In re Ngai, 367 F.3d 1336, 1338, 70 USPQ2d 1862, 1864 (Fed. Cir.
2004); In re Gulack, 703 F.2d 1381, 1386, 217 USPQ 401, 404 (Fed. Cir. 1983)
We agree with the examiner that the functional relationship of appellant’s
symbols to the watch or clock is not unobvious. Both cited references disclose a watch
having symbols which, like the appellant’s symbols, are disposed at the hour positions
on the watch. Therefore, we will sustain the rejection of the examiner.
Appellant argues that the symbols in the appellant’s invention do not, like the
symbols in Crow and Fontaine, just occupy the twelve hourly positions on the face of
the watch but, because they relate to the cranial nerves, the symbols are an educational
tool. While it may be true that the symbols are an educational tool, the functional
relationship between the symbols and the watch or clock is the same functional
relationship as depicted in the references, i.e., the positions of the symbols correspond
to the hours on the clock or watch. It is the functional relationship of the symbols to the
clock or watch which is critical in a determination of patentability.
Appellant also argues that there is no motivation to place appellant’s symbols of
cranial nerves on a watch or clock. This argument is not persuasive because as we
stated above, it is not the content of the printed matter (cranial nerve symbols) on which
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