Appeal No. 2006-2354 Page 12
Application No. 09/877,157
on a compact disk. Protection for this type of work is provided under copyright
law.
Prior art rejections and descriptive material
When presented with a claim including nonfunctional descriptive material,
an Examiner must determine whether such material should be given patentable
weight. The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior art. In re
Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). The PTO may
not disregard claim limitations comprised of printed matter. See Gulack, 703 F.2d
at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S. at 191, 209
USPQ at 10. However, the PTO need not give patentable weight to descriptive
material absent a new and unobvious functional relationship between the
descriptive material and the substrate. See Gulack, 703 F.2d at 1386, 217 USPQ
at 404. See also In re Ngai, 367 F.3d 1336, 1338, 70 USPQ2d 1862, 1863-64 (Fed.
Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir.
1994). The burden of establishing the absence of a novel, nonobvious functional
relationship rests with the PTO. In re Lowry, 32 F.3d at 1584, 32 USPQ2d at
1034.
We conclude that when the prior art describes all of the claimed structural
and functional relationships between descriptive material and the substrate, but the
prior art describes a different descriptive material than the claim, then the claimed
descriptive material is non-functional and will not be constitute a sufficient
difference from the prior art to establish patentability. That is, we conclude that
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