Ex parte Hansen

Informative decision only: persuasive authority, not binding precedent. When a claimed product differs from the prior art only in the content of printed matter, the Board applies the Gulack test and gives the printed matter no patentable weight unless it has a "new and unobvious functional relationship" with its substrate. Printed decal messages on a decal sheet and liner have only the ordinary relationship any decal has to its substrate, so, as in Ngui, they merely teach a new use for a known product and do not distinguish the prior art. No prior Board precedent is named as being overruled; the Board follows In re Gulack and In re Ngui, and cites Ex parte Nehls (BPAI 2008, precedential) with "Cf." as an analogous case. For the examiner, the decision supports giving no weight to printed content of decals when the structure is met by the prior art, and it holds that intended-use preambles, "whereby" result clauses and similar language add no structural limitation. For the applicant, reciting the instructional content of the decals, or the purpose of grouping them, will not avoid anticipation or obviousness unless the content is shown to interrelate functionally with the substrate in a new and unobvious way. The Board relied on Federal Circuit authority: In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983), In re Ngui, 367 F.3d 1336 (Fed. Cir. 2004), Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997), and Texas Instruments v. ITC, 988 F.2d 1165 (Fed. Cir. 1993). For obviousness it relied on KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007), and In re Dillon, 919 F.2d 688 (Fed. Cir. 1990). LEGAL TEST OR STANDARD: Gulack governs whether limitations defining descriptive material get patentable weight. Printed matter must be considered, but where it is not functionally related to the substrate it may not be entitled to patentable weight. The critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. Where the difference from the prior art is only the content of printed matter, the claimed product is unpatentable unless the substrate and printed matter have such a relationship. TRIGGERING FACTS: The claimed decal organization tool (an information layer with decals, removal cuts, adhesive, and a liner sheet) had every structural limitation met by Kruchko's decal product. The remaining differences were the instructional content of the decals and the colored versus transparent margin and line versus filled-interior border. The decals were peeled from a liner as with any decal, and the Specification says decals are peeled off their liner when a user wants to apply them. Applicant's arguments that the decals support the information and are sized for particular product locations did not show a new functional relationship. KEY QUOTE: "Just as in Ngui, all the printed matter defined by claim 33 does is teach a new use for a known product - a substrate comprising multiple decals." (Paper 2007-3424, p. 9) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is overruled. The Board follows In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983), and In re Ngui, 367 F.3d 1336 (Fed. Cir. 2004), and cites Ex parte Nehls, 2008 WL 258370 (BPAI 2008, precedential) with a Cf. signal. PRACTICE TIP: Do not rely on the informational content printed on a product, or on intended-use preambles or whereby clauses, to distinguish prior art. Claim structure, or show a specific new and unobvious functional interrelationship between the printed matter and the substrate, as in Gulack, where the printed matter and substrate depend on each other.