Appeal 2006-2056
Application 10/102,192
Gulack 703 F.2d 1381, 1384-85, 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 1582-83, 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 certain novel arrangements of printed lines or
characters, useful and intelligible only to the human mind.” Id. quoting In re
Bernhart, 417 F.2d 1395, 1399, 163 USPQ 611, 615 (CCPA 1969).
Accordingly, although we will not disregard any claim limitations and will
assess the claimed invention as a whole, we will follow the Federal Circuit’s
guidance as in the Gulack decision and will “not give [any] patentable
weight to printed matter absent a new and unobvious functional relationship
between the printed matter and the substrate.” Id. (Emphasis supplied).
CONCLUSIONS OF LAW
As noted above, it was our finding that claim 1 is not based on a
Specification that lacks descriptive written support. With respect to the
second paragraph rejection of claims 3 and 6, the steps in claims 3 and 6 that
are pointed to by the Examiner presumably are performed by the dealer. In
our view, these claims are not vague, indistinct, or unclear in this respect.
Turning to the rejection of claim 12 as lacking novelty, we are in
agreement with the Examiner that the standard card deck of Webb is a single
deck and it has 4 suits only, that is hearts, clubs, spades, and diamonds. We
are in further agreement with the Examiner that a normal deck has cards
numbered 2-10 and an ace. We see nothing in the claims that precludes the
6
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