Appeal No. 2007-0340
Application 10/057,259
BARRY, Administrative Patent Judge, concurring.
I concur with my colleagues and write separately with an additional
observation. As aforementioned, "the PTO gives claims their 'broadest reasonable
interpretation.'" In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed.
Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668
(Fed. Cir. 2000)). As part of this interpretation, "'[w]here . . . printed matter is not
functionally related to the substrate, the printed matter will not distinguish the
invention from the prior art in terms of patentability.'" In re Ngai, 367 F.3d 1336,
1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (quoting In re Gulack, 703 F.2d
1381, 1385, 217 USPQ 401, 404 (Fed.Cir.1983)). "Although the printed matter
must be considered, in that situation it may not be entitled to patentable weight."
Gulack, 703 F.2d at 1385, 217 USPQ at 404.
Here, claim 1 recites in pertinent part the following limitations: "a first timer
flag and a second timer flag. . . ." I view the phrase "a first timer flag and a second
timer flag" as analogous to unpatentable printed matter. Because no timing is
claimed, and no action is performed in response to the timer flags, the data
representing the flags lack a functional relation to the claimed apparatus.
Therefore, the phrase is not entitled to patentable weight.
In an ex parte appeal, however, the Board "is basically a board of review C
we review . . . rejections made by patent examiners." Ex parte Gambogi,
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