Appeal 2007-1558
Application 10/635,362
Compare In re Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961) (considering challenge to taking of judicial notice by Trademark Trial and
Appeal Board), see also 37 C.F.R. § 1.111(b). Appellant merely requests the
Examiner to provide a prior art reference without presenting any arguments or
evidence as to why the Examiner’s notice was incorrect.
Furthermore, 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); In
re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). In the
present case, the only difference between the applied prior art and the subject
matter of claim 10 is the specific content of the writing to be stored (i.e., the
printed matter to be stored). The claimed invention requires storing a writing on a
piece of furniture, where the furniture comprises a surface configured to
permanently receive the writings. There is no interrelationship between the printed
matter and specific piece of furniture on which it is to be stored, i.e., the printed
matter does not depend on the furniture nor does the furniture depend on the
printed matter. In this respect, the present case is distinguishable from the situation
in In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983), where the
claimed invention was directed to a device comprising “three key elements: (1) a
band, ring, or set of concentric rings; (2) a plurality of individual digits imprinted
on the band or ring at regularly spaced intervals; and (3) an algorithm by which the
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