Appeal No. 2005-0952
Application No. 09/908,282
Like the examiner, the only differences we perceive between
the label form of Korondi and that of appellant’s claims
1 through 9 and 12 through 17 reside in the arrangement and/or
content of the printed matter which is set forth as being
received by and/or on one or the other of the first and second
labels. As the examiner has already pointed out, the appropriate
test for determining whether such printed matter is entitled to
patentable weight is set forth in In re Gulack, 703 F.2d 1381,
1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983), which states
[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 sufficient to establish patentability. The bare
presence or absence of a specific functional relationship,
without further analysis, is not dispositive of obviousness.
Rather, the critical question is whether
there exists any new and unobvious functional
relationship between the printed matter and the
substrate. [Footnotes and citations omitted.]
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