Appeal No. 2006-1562
Application No. 10/720,948
(claim 2), or restricting the user’s peripheral vision (claim
15). Also, Arnold teaches that her patch is disposable (claim
9). (Column 1, line 7).
Both Arnold and Morgan appear to anticipate Appellant’s
claims 7 and 8. With regard to claims 7 and 8, we bring to the
Examiner’s and Appellant’s attention relevant case law regarding
the rejection of claims related to logos, printed matter and
designs on products. Generally, where the only difference
between a prior art product and a claimed product is printed
matter that is not functionally related to the substrate, the
content of the printed matter will not distinguish the claimed
product from the prior art. In re Ngai, 367 F.3d 1336, 1339,
70 USPQ2d 1862, 1864 (Fed. Cir. 2004). See In re Gulack,
703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983);
In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (C.C.P.A.
1969); MPEP § 2112.01. Additionally, matters directed to design
or ornamentation only, having no mechanical function whatever
with respect to the claimed invention, cannot be relied on as a
basis for patentability. In re Seid, 161 F.2d 229, 231, 73 USPQ
431, 433 (C.C.P.A. 1947). Therefore, in order for the “logo”
and “written indicia” recited in Appellant’s claims 7 and 8 to
distinguish the product from the prior art, there must be a
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