Appeal 2007-1558
Application 10/635,362
of that furniture as being intended to permanently receive handwritten writings”
(Reply Br. 4-5).
The only difference between the applied prior art and the subject matter of
claim 28 is the presentation of materials specifically designating a member of the
furniture as being intended to permanently receive the writings, i.e., “instructions
(130) that explain the intended use of the plank” (Specification ¶ 22). In this
respect, the present case is similar to the situation in In re Ngai, 367 F.3d 1336, 70
USPQ2d 1862 (Fed. Cir. 2004), were the claimed invention was directed to a kit
comprising instructions and a premeasured portion of a reagent. Id., 367 F.3d at
1337, 70 USPQ at 1863. The Ngai court found that “[a]ll the printed matter [ i.e.,
the instructions] does is teach a new use for an existing product” and that Ngai was
not “entitled to patent a known product by simply attaching a set of instructions to
that product.” Id. at 1339, 70 USPQ at 1864. Accordingly, Appellant’s argument
that the claimed method is patentable over the applied prior art because it recites
presenting materials which specifically designate the intended use of a surface of a
known product is not persuasive. As such, we sustain the Examiner’s rejection of
claim 28 under 35 U.S.C. § 103(a) in view of Hardin, McClintock, or Greiwe.
CONCLUSIONS OF LAW
We conclude:
1. The Examiner erred in rejecting claim 12 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
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