Appeal No. 2006-1643 Παγε 10
Application No. 09/845,589
We are not persuaded by appellants assertion (brief, page 8)
that there is no teaching or suggestion of making scrapbook pages
in FJCP. From the nature of the problem to be solved, e.g.,
making a scrapbook page, we find that the user would be aware
that an entire photographic sheet, such as the second sheet from
the right on page 1 of FJCP could be put into a scrapbook as a
scrapbook page. In addition, we find that a user would be
motivated to put together a collage of pictures as a scrapbook
page, as users will inherently know to create scrapbooks from
pages made of photographs, etc.
We agree with appellants (brief, page 8) that Monn does not
disclose putting the instructions on the same medium as the
image. However, the instructions are printed matter that do not
create a new and unobvious relationship between the printed
matter (instructions) and the substrate (photographic medium).
Because there is no functional relationship between the
instructions and the substrate, we find that placing printed
matter on the substrate with the photo does not result in the
printed matter being given patentable weight based upon the facts
in this case; see In re Ngai, 367 F.3d 1336, 1338, 70 USPQ2d
1862, 1863-1864 (Fed. Cir. 2004).
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007