Appeal No. 2006-0476
Application No. 10/365,258
Rejection of claims 32 and 33
Appellants argue, on page 10 of the brief:
Independent claim 32 recites “a modifiable label containing information
pertaining to at least a portion of the equipment, wherein said information
changes from time to time.” However, figures 5A and 5B in Newhouse
disclose a label consumed with operational instructions and does not
teach the label as being modifiable from time to time. Furthermore,
Newhouse does not disclose the operational instruction of the chair would
ever change, thereby giving no reason to change the information printed
on the card.
In response, the examiner argues, on page 8 of the brief “similar to claim
26, the markings of Newhouse are capable of being changed.”
We disagree with the examiner. Claim 32 recites “a modifiable label
containing information pertaining to at least a portion of the equipment, wherein
the information changes from time to time.” Our reviewing court has said,
“[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
patentablility.” In re Gulack 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir.
1983). We consider the “information” on the label to be non-functional
descriptive material. As such, the contents of the information alone will not
render the claim patentable, i.e., that the information pertains to the equipment is
immaterial. Nonetheless, claim 32 does recite that the information changes over
time. We find no disclosure in Newhouse that the information changes over time.
Accordingly, we will not sustain the examiner’s rejection of independent claim 32
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007