Appeal No. 2004-2299
Application No. 09/244,006
“printed matter” doctrine or case law (see the Remand, Paper
No. 24).
As stated by Judge Rich in In re Miller,5 concerning a claim
to a measuring vessel having printed thereon indicia and a legend:
It seems to us that what is significant here is not
structural but functional relationship[s]...
...
Here there is a new and unobvious functional relationship
between a measuring receptacle, volumetric indicia
thereon indicating volume in a certain ratio to actual
volume, and a legend indicating the ratio, and in our
judgment the appealed claims properly define this
relationship.
In In re Gulack,6 the court considered an invention with three
elements, namely a band or ring, a plurality of individual digits
imprinted on the band or ring, and an algorithm by which the digits
are developed. The court held that
Where 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 [footnote omitted].
...
Rather, the critical question is whether there exists any
new and unobvious functional relationship between the
printed matter and the substrate [footnote omitted].
5418 F.2d 1392, 1395-96, 164 USPQ 46, 48-49 (CCPA 1969).
6703 F.2d 1381, 1386, 217 USPQ 401, 404 (Fed. Cir. 1983).
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