Appeal No. 2004-2299
Application No. 09/244,006
“printed matter” doctrine is certainly relevant to the
patentability issue raised by the appealed claims. Particularly
relevant to this issue is whether the here claimed “three-
dimensional character face” has any functional relationship to the
article on which it is disposed.
As discussed above with regard to the rejections under
sections 102(b) and 103(a), every independent claim on appeal
requires “a three-dimensional character face” affixed to a second
surface of the underlying article. Therefore, as noted in the
reversal of the rejection under section 102(b), the “three-
dimensional character face” is a discrete element of the claimed
article. However, this is not a design application but a utility
application with all claims directed to articles or products of
manufacture. On this record, the “three-dimensional character
face” is merely a “decoration” fastened to the larger underlying
article (Supplemental Reply Brief, page 2). There is no evidence
in this record that the “three-dimensional character face” has any
mechanical function in relation to the underlying article.
Therefore we determine that the here claimed “three-dimensional
character face” relates only to matters of ornamentation or
aesthetic design (see appellants’ specification, pages 1-2,
regarding the prior art “ornamental designs” (page 1) and the
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