Appeal 2006-1601
Application 09/828,579
reasoning” for a person. As discussed supra, this “logic” is nonfunctional
descriptive material because it does not impart functionality when employed as a
computer component. Interim Guidelines, 1300 O.G. at 151.
The Sloan patent (the physical document itself) is a printed storage medium
upon which is recorded (i.e., printed) nonfunctional descriptive material in the
form of information about Sloan’s invention. Sloan does not teach nonfunctional
descriptive material in the form of “logic.” However, nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise been
obvious. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir.
1983) (when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in terms of
patentability).
(3)
Alternative Theory of the § 103(a) Rejection of claims 11-15
Even if we were to adopt Appellant’s narrower definition of “logic” (Br. 10),
we reach the same conclusion.
Claims 11-15 include paper with printed logic in the form of computer
instructions, i.e., a paper printed with nonfunctional descriptive material. See our
discussion at Section V.B.(3)(b). As such, we conclude the “logic” (printed
computer instructions) of claims 11-15 lacks any new and nonobvious functional
relationship with the “medium” (paper). See In re Lowry, 32 F.3d at 1584, 32
USPQ2d at 1035.
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