Appeal 2007-1558
Application 10/635,362
some articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness’ . . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of ordinary skill
in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006)). Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at
788.
Where the only difference between the claimed subject matter and the prior
art resides in printed matter and the printed matter recited in the claim is not
functionally related to the substrate on which it is printed, then the printed matter
will not distinguish the invention from the prior art in terms of patentability. See In
re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (holding
that an inventor could not patent known kits simply by attaching a new set of
instructions to the product); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,
404 (Fed. Cir. 1983) (holding that digits placed on a band patentability distinguish
the band from the prior art because the claims require a particular sequence of
digits to be displayed on the outside surface of a band and the digits exploit the
endless nature of the band).
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