Appeal 2006-2109
Application 10/680,678
1 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338, 70
2 USPQ2d 1862, 1863-64 (Fed. Cir. 2004).
3 Thus, when the prior art describes all the claimed structural and functional
4 relationships between the descriptive material and the substrate, but the prior art
5 describes a different descriptive material than the claim, then the descriptive
6 material is nonfunctional and will not be given any patentable weight. That is, we
7 conclude that such a scenario presents no new and unobvious functional
8 relationship between the descriptive material and the substrate.
9
10 ANALYSIS
11 Claims 1-6, 11-14, and 19-20 rejected under 35 U.S.C. § 103(a) as obvious over
12 Helbling.
13 We note that the Appellant argue these claims as a group. Accordingly, we
14 select claim 1 as representative of the group.
15
16 Initially, we note that the steps in claim 1 do no more than sell a meal and
17 transfer part of the amount collected to a charity. Clearly, this is performed by
18 Helbling (FF 05). The only difference between Helbling’s process and the
19 claimed process is the story that is spun to describe how the transaction is
20 explained to customers in the promotional campaign. A price of a meal is
21 nonfunctional and is merely a descriptive attribute of the meal. The amount of
22 funds that are transacted may be functional, but as both the claims and Helbling
New IEEE Standard Dictionary of Electrical and Electronics Terms 308 (5th ed.
1993).
14
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