Appeal 2007-0916
Application 10/051,486
instructions. The court declined to give weight to the instructions limitation
because the instructions bore no functional relationship to the substrate on
which they were printed.
In reaching its decision, the court discussed and distinguished In re
Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983). In Gulack, the
claims were directed to a band with a sequence of numerals printed such that
the numerals read consecutively clockwise constituted the solution to a
specific algorithm. The court reversed the rejection of the claims under
§ 10339 because the printed numerals had a functional relationship to the
band on which they were printed: they provided solutions to an algorithm.
A printed-matter analysis can also be used in contexts beyond printed
matter limitations. In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir.
1994) (applying the analysis in the alternative). In Lowry, the court
considered the rejection of claims to memory storing a data structure. The
court found that the data structure resulted in electrical or magnetic
differences in the structure of the memory, which resulted in a memory that
performed differently. In view of this performance relationship between the
data structure and the memory the court held that no prima facie case of
obviousness had been established.40
"Printed matter" is not magic language that permits an examiner to
ignore a claim limitation. Both Lowry and Gulack caution against the liberal
application of printed matter rejections. As Ngai demonstrates, however, the
printed matter analysis has a role in obviousness analysis. Superficial or
39 The Board had already reversed a rejection under 35 U.S.C. § 101.
40 I.e., the data structure acted on the memory to restructure the memory.
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