Appeal No. 2007-0220
Application No. 09/982,640
OPINION
For the reasons set forth by the Examiner in the Answer, as amplified
here, we sustain each of the three separately stated rejections of the claims
on appeal. The Examiner has correlated each of the respective independent
claims to specific teachings of Skillen and Loeb as well as grouped common
subject matter of grouped dependent claims in the same manner. In like
manner, the Examiner’s responsive arguments beginning at the bottom of
page 8 of the Answer address specifically numbered points of the
Appellant’s arguments in the principal Brief on appeal. The following
remarks buttress the Examiner’s positions by expanding upon the analysis as
well as the consideration of the teachings of the respective references,
further in view of the extensive arguments in the Brief and Reply Brief.
At the outset, it appears to us that the subject matter presented in all
claims on appeal relates to features that may differ from the prior art solely
on the basis of “non-functional descriptive material,” which is generally not
given patentable weight when determining patentability of an invention over
the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed.
Cir. 1983). The PTO may not disregard claim limitations comprised of
printed matter. See Gulack, 703 F.2d at 1384, 217 USPQ at 403; see also
Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However,
the Examiner 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). We conclude that when the prior art
describes all the claimed structural and functional relationships between the
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