Appeal 2006-1533
Application 10/607,472
The Appellant argues that in Gulack the only difference between
Gulack’s rings and the rings in the Witcoff reference was that the digits on
Gulack’s rings were printed in a particular order such that rings could be
aggregated to form an endless loop,1 and that “Gulack’s rings were held to
be patentable because the numbering formed a functional relationship with
the rings by forming a loop” (Br. 12).
The court in Gulack considered the bands of Gulack and Witcoff to be
similar in that they both supported data. See Gulack, 703 F.2d at 1386, 217
USPQ at 405. The difference, in the court’s view, was that Witcoff’s “data
items are independent, bearing no direct relation to the other data entries on
Witcoff’s band”, id., whereas Gulack’s data had “an endless sequence of
digits – each digit residing in a unique position with respect to every other
digit in an endless loop”. Gulack, 703 F.2d at 1386-87, 217 USPQ at 405.
Thus, the patentable distinction was the relation of Gulack’s digits to other
digits, i.e., the algorithm used to generate the digits, not the relation of the
digits to the band. Although the court stated that “the digits exploit the
endless nature of the band”, Gulack, 703 F.2d at 1387, 217 USPQ at 405, as
pointed out in the dissent, “at oral argument the Appellant conceded that the
same result his invention accomplishes also could be accomplished by
placing the numbers in a continuous series upon a cube or other shape, or
even by writing them in a circle upon a flat surface.” Id. Hence, as stated in
the dissent, “[t]he precise nature of the object on which the numbers are
placed is thus of little importance.” Id. Thus, the Appellant’s argument that
“Gulack’s rings were held to be patentable because the numbering formed a
1 Actually, there was no aggregation of rings to form an endless loop. The
numbers formed a loop on each ring. See Gulack, 703 F.2d at 1382, 217
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