Appeal 2006-2496
Application 09/944,696
Appellants also present a general argument that Garofakalis does not provide
a suggestion to modify any of the primary references to arrive at the claimed
invention (Br. 9). Finally, Appellants argue that Garofakalis fails to disclose
the “mathematical correspondence called for by the term ‘function of
frequency’” (Reply Br. 4), which appears only in independent claim 28.
We note that Appellants have presented no specific arguments
disputing the Examiner’s mapping of Garofakalis to the limitations of claim
29 or the rationale set forth by the Examiner for combining Garofakalis with
Boden, Nauckhoff and Microsoft ® Word 2000 (Answer, 13). Accordingly,
Appellants have waived any such arguments. Since we find no deficiencies
with respect to the rejection of independent claim 28, as discussed supra, we
will sustain the Examiner’s rejection of dependent claim 29.
Finally, recognizing that this issue has not been argued by Appellants
or the Examiner, we note in passing that the nature of the claimed and
argued subject matter relates to the content of information being displayed
rather than any functionality or methodology involved in causing the display
itself, features best described as “non-functional descriptive material”. We
need not give patentable weight to descriptive material absent a new and
unobvious functional relationship between the descriptive material and the
substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035
(Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338, 70 USPQ 1862, 1864
(Fed. Cir. 2004). In other words, we find that the meaning attributed to the
information displayed cannot be used to distinguish the claimed information
displayed from prior art displays. See also Ex Parte Curry, BPAI Appeal
No. 2005-0509 (Appl. No. 09/449,237) (aff’d, Appeal No. 06-1003 (Fed.
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