Appeal No. 2004-2299
Application No. 09/244,006
the reference evidence. Accordingly, we cannot sustain any of the
examiner’s rejections on appeal based on section 103(a) in view of
Goodman.
D. The New Ground of Rejection
In the “Remand to the Examiner” dated Sep. 30, 2003, Paper No.
24, we remanded this application to the examiner and appellant,
inter alia, for consideration of the doctrine of “printed matter.”
In this regard, we explicitly stated that “[t]he examiner and
appellant should consider whether there is any functional
relationship between the decorative applique and the substrate
article” (Remand, Paper No. 24, pages 4-5). The examiner stated
that applying an applique to the surface of an article is not
“printed matter” because a print involves “a mark or impression
made by a device such as [a] stamp, die, pen or seal in or on a
surface by pressure” (Supplemental Answer, Paper No. 26, page 2).
Similarly, appellant stated that an “applique is commonly defined
as a cutout decoration fastened to a larger piece of material” and
thus cannot be considered a print that involves a mark or
impression made by a device in or on a surface by pressure
(Supplemental Reply Brief, dated Feb. 5, 2004, page 2).
Regardless of whether the appellant’s claimed invention
involves “printed matter,” the underlying rationale for the
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