Appeal No. 2006-2074
Application No. 10/158,197
motivation to combine the references. Further, on page 13 of the brief,
appellants argue that modifying Sanelli to include an indicia of the type of
blade would remove the foodstuff label on Sanelli’s knifes.
Appellants’ arguments have not convinced us of error in the
examiner’s prima facie case of obviousness. Initially, we note that there are
no arguments directed to the combination of Sanelli’s knife with indicia on
the butt of the handle and Howell’s knife block. We are not persuaded that
the indicia on the handle of the knife functionally relates to the knife.
Appellants’ arguments make much of the indicia on the butt of the knife
reducing the wear on the knife. We are not persuaded by this line of
reasoning. The indicia provides an indication of the type of knife in the
knife block. The indicia aids the user in selecting the knife prior to
removing it from the block, saving the user time and reducing the number of
times the knife is removed from the block. Thus, reducing wear is a
potential benefit, not the function, of the label if the user makes use of the
indicia. Further, the indicia is not functionally related to the substrate (the
knife) the indicia merely describes the knife, it does not relate to the function
of the knife, i.e. it does not effect the knives’ ability to cut. In In re Gulack,
703 F. 2d 1381, 217 USPQ 401 (Fed. Cir. 1983), the court held that the
printed matter would not achieve it’s educational purpose without the
substrate (a band) and the band without the printed matter would not be able
to produce the desired result. In this case, the claimed knife will be able to
perform its function of cutting regardless of what is indicated on the handle.
Thus, even without the additional teachings of Arnold and Bond we
find that the examiner has made a prima facie case of obviousness.
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