BPAI uses printed matter doctrine to reject disposable garment claims (Ex parte Sosalla)

Takeaway: The claims in Ex parte Sosalla were directed to a disposable garment including a focal and a background graphic, where the claims further described characteristics of each graphic. On appeal, the Board issued a new anticipation rejection using the printed matter doctrine. Specifically, the Board found that the two graphics were printed matter on the garment substrate, and that the properties of the graphics were thus non-functional descriptive material and not entitled to patentable weight.

Details:
Ex parte Sosalla
Appeal 2009010866, Appl. No. 11/025,528, Tech. Center 3800
Decided August 26, 2010

The six independent claims all included "a focal graphic" and "a background graphic." In five of the independent claims, each graphic included a "color transition region" having a particular width limitation, e.g.,  "a hue transition width" of 0.5 mm, a "saturation transition width" of 1.0 mm, etc. In the remaining independent claim, the background graphic was further limited to "a Gaussian blur effect" of 4 pixels.

The Board reversed a single reference obviousness rejection, finding that the reference did not disclose the particular width limitations, and that the Examiner's reason for modification ("create a more apparent graphic feature against a contrasting background") was not persuasive.

The Board then issued a new anticipation rejection, using the same reference. The Board first made findings of fact:

Sosalla discloses each structural limitation on the garments recited in each of these claims  ... This includes, without limitation, a disposable garment having a multicolored scene graphic including a focal graphic incorporating at least one character graphic; a background graphic; and a garment-feature graphic disposed on the garment. 

The Board then found that the non-structural limitations of the claim were not entitled to patentable weight:

The disposable garment in each of the appealed claims serves as a substrate and the focal graphic and background graphic are printed matter on that substrate. (FF 3, 4). The relationship between the disposable garment and the graphics is aesthetic and a non-functional relationship. To the extent that the Appellants argue that the relative degree of blurring of the focal and background graphics makes such garments visually appealing and more desirable to wear (see Spec. 1, ll. 10-26), the function of the graphics is “useful and intelligible only to the human mind” and, as such, does not  patentably (that is, structurally) distinguish the claimed subject matter from the prior art. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969); see also In re Seid, 161 F.2d 229, 231 (CCPA 1947) (differences in ornamentation are entitled to little weight in determining the obviousness of a claim to a structure).

My two cents: The Board only muddied the waters by referring to ornamentation and aesthetics to explain why the visual appeal of the claimed graphics was not a patentable distinction. This case really rested on the printed matter doctrine, quoted in the "Principles of Law" section of the opinion:

When the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. Although the printed matter must be considered, in that situation it may not be entitled to patentable weight. In re Gulack, 703 18 F.2d 1381, 1385 (Fed. Cir. 1983).

So I read this case as being a straightforward application of the printed matter doctrine. The details of the graphics – aesthetic or not – are completely irrelevant, since no functional relationship existed between the garment and the graphics.