In Ex parte FITZPATRICK appellant loses on anticipation, wins on obviousness

From Ex parte FITZPATRICK


In a non-precedential decision, our reviewing court reminded us of the 2 applicability of the precedential In re Gulack, 703 F.2d 1381 (Fed. Cir. 3 1983), In re Bernhart, 417 F.2d 1395 (CCPA 1969) and In re Lowry, 32 4 F.3d 1579 (Fed. Cir. 1994) decisions. We have held that patent applicants
5 cannot rely on printed matter to distinguish a claim unless “there exists [a] 6 new and unobvious functional relationship between the printed matter and 7 the substrate.” In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (citing In 8 re Gulack, 703 F.2d 1381, 1386 (Fed.Cir.1983)

[T]he Board did not create a new “mental distinctions” rule in denying patentable weight . . . . On the contrary, the Board simply expressed the above-described functional relationship standard in an alternative formulation—consistent with our precedents—when it concluded that any given position label’s function . . . is a distinction “discernable only to the human mind.”. . . . see In re Lowry, 32 F.3d 1579, 1583 (Fed.Cir.1994) (describing printed matter as “useful and intelligible only to the human mind”) (quoting In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969)). In re Xiao, 2011-1195 WL 4821929, at *3-4 (Fed. Cir. 2011) (Non- precedential). Thus non-functional descriptive material, being useful and 21 intelligible only to the human mind, is given no patentable weight. “The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.” King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed Cir 2010). See also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). (The relevant inquiry here is whether the additional instructional limitation has a “new and unobvious functional relationship” with the method, that is, whether the limitation in no way depends on the method,
and the method does not depend on the limitation).



Outcome

The rejection of claims 1-4 under 35 U.S.C. § 102(b) as anticipated by Currans is proper.
The rejection of claim 56 under 35 U.S.C. § 103(a) as unpatentable over Currans and Franklin is improper.
The rejection of claim 57 under 35 U.S.C. § 103(a) as unpatentable over Currans, Franklin, and Rast is improper.