Appeal No. 2006-1115
Application No. 10/397,748
This is because the pattern feature of claim 13, to which
the appellants’ argument is directed, involves matters of
appearance and visual impact only as revealed by the disclosure
of the subject application (e.g., see page 1). Such matters have
no relevance to the issue of whether the utility claims on appeal
are patentable. It is here appropriate to emphasize that matters
relating to ornamentation only which have no mechanical function
cannot be relied upon to patentably distinguish a claimed
invention from the prior art. See In re Seid, 161 F.2d 229, 231,
73 USPQ 431, 433 (CCPA 1947). The pattern feature of claim
13 has no mechanical function. Moreover, this feature has no
functional relationship with the tissue sheet substrate on which
it appears. In this last mentioned respect, consideration of the
appellants’ pattern feature might be regarded as analogous to
consideration of printed matter on an article defined by utility
claims. See In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862,
1864 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385-86,
217 USPQ 401, 404 (Fed. Cir. 1983); In re Miller, 418 F.2d 1392,
1396, 164 USPQ 64, 68-69 (CCPA 1969). That is, in the absence
of a functional relationship to its substrate, the claim
13 pattern feature (as with printed matter) will not distinguish
a utility invention from the prior art in terms of patentability.
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