Appeal No. 2004-2299
Application No. 09/244,006
Finally, the court has recently considered the addition of a
new set of printed instructions into a known kit, and cited the
above quote from Gulack. See In re Ngai, 367 F.3d 1336, 1339, 70
USPQ2d 1862, 1864 (Fed. Cir. 2004).
In the claimed subject matter of this appeal, there is no
functional relationship between the “matter” (i.e., the “three-
dimensional character face”) affixed to a surface of the underlying
article (e.g., a hair brush), with the “matter” being merely
decorative or for aesthetic design. Accordingly, we determine that
this “matter” (i.e., a “three-dimensional character face”),
similarly to “printed matter,” does not distinguish the claimed
subject matter from the prior art in terms of patentability. Cf.,
In re Gulack, 703 F.2d at 1386, 217 USPQ at 404. If we were to
adopt appellant’s argument that every three-dimensional character
face affixed to an article was patentable, anyone could continue
patenting the article or product indefinitely providing that they
affix a new three-dimensional character face to the surface of the
article. Cf., In re Ngai, supra.
For the above stated reasons, it is our conclusion that the
“three-dimensional character face” recitation of the appealed
independent claims defines subject matter which (though novel
within the meaning of 35 U.S.C. § 102 as previously explained)
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