Appeal 2006-1679
Application 09/853,568
recognize that [the inventor] invented what is claimed”)). Thus, an applicant
complies with the written description requirement “by describing the
invention, with all its claimed limitations, not that which makes it obvious,”
and by using “such descriptive means as words, structures, figures,
diagrams, formulas, etc., that fully set forth the claimed invention.” Id.
(citing Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966). It is important to
note that "[t]he invention is, for purposes of the ‘written description’ inquiry,
whatever is now claimed.” Vas-Cath, 935 F.2d at 1564, 19 USPQ2d at 1117.
Before discussing the claimed subject matter specifically, as well as
the prior art and the examiner’s rejections, we turn to the vexing question of
claim limitations directed to printed or written matter. Nonfunctional
descriptive material cannot render nonobvious an invention that is otherwise
obvious over the prior art. 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). Our reviewing court
and its predecessor have frequently cautioned the Patent and Trademark
Office (PTO) that all claim limitations must be considered when determining
patentability over the prior art. In re Lowry, 32 F.3d 1579, 1582-83, 32
USPQ2d 1031, 1034 (Fed. Cir. 1994) quoting In re Gulack 703 F.2d 1381,
1384, 217 USPQ 401, 403-04 (Fed. Cir. 1983). Furthermore, the Federal
Circuit has cautioned against a liberal use of a printed matter rejection. Id.,
32 F.3d at 15821-83, 32 USPQ2d at 1034. Nonetheless, we recognize in the
instant case the classic printed matter situation in which Appellant is
advancing patentability based on the content of the labels of the invention.
These printed matter cases “dealt with claims defining as the invention
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