Appeal 2007-0796
Application 10/236,088
neither Jeter nor Mengel makes up for the alleged deficiencies of Fisher
discussed in regard to rejection (3) above (App. Br. 29). This argument is
not persuasive, for the reasons set forth above in our discussion of rejection
(3). The rejection of claims 18, 29-31, 34 and 37 as unpatentable over
Fisher in view of Jeter and Mengel is sustained.
Claims 36 and 39:
With respect to claims 36 and 39, Appellant additionally argues that
Fisher, Jeter and Mengel fail to teach or suggest "instructing" a person to
read or mark information on the elongated member, as recited in claims 36
and 39, respectively (App. Br. 30). The Examiner implicitly determines that
such steps of instruction can be met by providing instructions on the use of
the article on the elongated member or tape (Ans. 10 and 20-21). Such an
interpretation of the claims is consistent with the ordinary and customary use
of the term "instructing." As we cannot find any specific embodiment of the
steps of instructing a person to read or mark information on the elongated
member disclosed in Appellant's Specification, we cannot help but find the
Examiner's position consistent with the broadest reasonable construction of
the claim language in light of the Specification. That being the case, the
difference between the claimed subject matter and the applied prior art
resides in the particular indicia printed on the elongated member and,
specifically, in the attachment of a set of instructions to the product. "Where
the 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). In this case, instructions about how to use a product, such
as the combined writing instrument and calendar of Fisher, are not
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