Appeal 2007-0714
Application 10/651,354
Claim 1 requires a permanent character graphic disposed on the outer
cover in the first waist region; and an active object graphic disposed on the
outer cover in the crotch region; wherein the permanent character graphic is
interactively interrelated with the active object graphic. Both the character
graphic and the active object graphic are printed matter.
We recognize that “[t]he Patent and Trademark Office (PTO) must
consider all claim limitations when determining patentability of an invention
over the prior art,” and “may not disregard claim limitations comprised of
printed matter.” In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034
(Fed. Cir. 1994) (citations omitted). In determining whether the printed
matter imparts patentability to a claimed invention, however, “the critical
question is whether there exists any new and unobvious functional
relationship between the printed matter and the substrate.” In re Gulack,
703 F.2d 1381, 1386, 217 USPQ 401, 404 (Fed. Cir. 1983). The following
cases are illustrative.
In In re Miller, 418 F.2d 1392 (CCPA 1969), the claims were drawn
to measuring utensils, such as a cup or a measuring spoon, that had a legend
on them that automatically performed the calculation if a cook wished to
make a fractional portion of a recipe. Id. at 1393-94. While the Solicitor of
the Patent Office argued that the legends were printed matter, and thus
should be ignored, the court reversed the rejection, finding that there was “a
new and unobvious functional relationship between a measuring receptacle,
volumetric indicia thereon indicating volume in a certain ratio to actual
volume, and a legend indicating the ratio.” Id. at 1396.
At issue in In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983), was a claim
requiring a band, ring, or set of concentric rings; a plurality of digits
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