Appeal No. 2006-0609
Application No. 10/036,862
As indicated by In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d
1862, 1864 (Fed. Cir. 2004):
This case, however, is dissimilar from Gulack. There
the printed matter and the circularity of the band were
interrelated, so as to produce a new product useful for
“educational and recreational mathematical” purposes.
Here, addition of a new set of instructions into a
known kit does not interrelate with the kit in the same
way as the numbers interrelated with the band. In
Gulack, the printed matter would not achieve its
educational purposes without the band, and the band
without the printed matter would similarly be unable to
produce the desired result. Here, the printed matter
in no way depends on the kit, and the kit does not
depend on the printed matter. All that the printed
matter does is teach a new use for an existing product.
As the Gulack court pointed out, “[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.” Id. If
we were to adopt Ngai’s position, anyone could continue
patenting a product indefinitely provided that they add
a new instruction sheet to the product. This was not
envisioned by Gulack.
The claimed printed instructional material, like the printed
instructional material in Ngai, is not functionally interrelated
to the claimed package. Thus, consistent with Ngai, we determine
that the claimed printed matter would not distinguish the claimed
package from the apparatus or package taught by Marino. In
other words, we concur with the examiner that Marino would
have rendered the subject matter defined by claims 12 through
34 obvious within the meaning of 35 U.S.C. § 103.
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