Appeal No. 2004-2334
Application No. 09/888,145
at least one strip of paper displaying one hand unit of
cards, with each said hand unit comprising one or more
cards with each said card bearing the indicia of one
suit and one denomination to define a card game hand;
and
a fortune cookie containing said strip so that indicia
are not visible without breaking said fortune cookie.
Like the examiner, it is apparent to us that the only
difference between the novelty item set forth in appellant's
claim 11 and one of the fortune cookies shown in the cookie game
of Mueller resides in the content of the printed matter carried
by the strip of paper in each cookie and the meaning and
information conveyed by such printed matter. The appropriate
test for determining whether printed matter is entitled to
patentable weight is set forth in In re Gulack, 703 F.2d 1381,
1385, 217 USPQ 401, 403 (Fed. Cir. 1983), which states at 217
USPQ 404
[w]here the printed matter is not functionally related
to the substrate, the printed matter will not
distinguish the invention from the prior art in terms
of patentability. Although the printed matter must be
considered, in that situation it may not be entitled to
patentable weight . . .
* * *
[w]hat is required is the existence of differences
between the appealed claims and the prior art
55
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