Appeal 2006-2448
Application 10/700,425
birthday, graduation day and wedding day, that may or may not occur in a person’s
life” (Br. 7). That argument is not persuasive because the indicia on the
Appellant’s puzzle pieces is nonfunctional descriptive material, i.e., it has no new
and unobvious functional relationship with the substrate. See In re Gulack, 703
F.2d 1381, 1386, 217 USPQ 401, 404 (Fed. Cir. 1983). Without the indicia, the
pieces still function as puzzle pieces, and without the puzzle pieces the indicia can
be put on any other substrate. Regardless, Thompson’s pictures correspond to
commonly occurring or major life events that may or may not occur in a person’s
life such as doing or watching a handstand, wearing a hat for a special occasion,
doing something special with a man, girl or dog, or learning new mathematical
computations. During patent prosecution, claims are to be given their broadest
reasonable interpretation consistent with the specification, as the claim language
would have been read by one of ordinary skill in the art in view of the
specification. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989); In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983). The Appellant’s Specification indicates that the claim terms “major life
events” and “commonly occurring life events” include a first kiss and applying to a
medical school (p. 10, l. 6; p. 11, l. 12). Thus, the Specification indicates that the
claim terms “major life events” and “commonly occurring life events” are broad
enough to encompass the events pointed out above that correspond to Thompson’s
puzzle pictures.
The Appellant argues that “[t]he Thompson patent also does not disclose the
methodology of adding such puzzle pieces to a puzzle after such a major life event
has occurred” (Br. 7). The Appellant’s claims do not require adding each puzzle
piece after the corresponding event but before the next event. The claims are broad
enough to encompass assembling the entire puzzle after all of the events have
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