Ex parte Mathias

Informative decision only: persuasive authority, not binding precedent. When a claim differs from the prior art only in nonfunctional descriptive material (here, the particular broadcasted television image, a sporting event rather than another event), the Board may treat that difference as not lending patentability and sustain the rejection under 35 U.S.C. § 102 or § 103. Such a difference is treated as a mere rearrangement of descriptive material, and choosing particular content is presumed well within ordinary skill. No prior precedent of the Board is named as directly addressed by this decision; it applies the Federal Circuit's nonfunctional descriptive material cases to broadcast television content. For the examiner, it means a reference showing the claimed on-screen icon structure can anticipate or render obvious a claim even if the displayed image differs (for example, a sporting event versus a non-sporting event), without separate evidence on the content. For the appellant, arguing that the claim recites a particular content image will not distinguish the art unless that content is functionally related to the claimed substrate, and arguments not made in the brief are waived. The Board relied on In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004), and cited In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983), for the principle that nonfunctional descriptive material cannot lend patentability. LEGAL TEST OR STANDARD: Anticipation requires that the prior art reference disclose every element of the claim. Nonfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art. When descriptive material is not functionally related to the substrate, it does not distinguish the invention from the prior art. The Board listed common situations: a storage medium, a computer, or a process that differs from the prior art solely in nonfunctional descriptive material that does not alter how the machine or process functions. TRIGGERING FACTS: Claim 1 recited an on-screen scoreboard-style insert displayed over the broadcasted image of a sporting event, with sections color-matched to contestant uniforms. The AG-1991 reference showed the insert and color scheme but, taking the appellant's argument as given, displayed it over an event that was not a sporting event (such as a contestant interview). The only difference was the particular broadcasted image, which the Board deemed nonfunctional descriptive material. KEY QUOTE: "However, our reviewing court has held that nonfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by . the prior art." (p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004), and cited In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). PRACTICE TIP: Do not rely on the identity or subject matter of displayed content, such as a sporting event image, to distinguish prior art. Instead, claim and argue a functional relationship between the content and the claimed substrate, and make every argument in the brief, since unargued points are waived.