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Federal Circuit Review No. 80-1.
Printed Matter Doctrine Implicates Matter That Is Claimed for What it Communicates
In re Distefano, No. 2015-1453, 2015 U.S. App. LEXIS 21925 (Fed. Cir. Dec. 17, 2015) (Before Taranto, Hughes, and Prost, CJ.) (Opinion for the court, Prost, CJ.). Click Here for a copy of the opinion.
DiStefano claims a method for designing a web page using a graphical user interface composed of a display screen and overlaid design plate. A selecting limitation requires the user to select an element from a database including third-party web assets and assets from outside the graphical user interface. The PTAB held that the web assets are “printed matter.” Further, this “printed matter” was found to have no functional relationship to the claimed method, and not a meaningful limitation for determining patentability. The claims, construed in this way, were deemed anticipated by the D’Arlach patent.
On appeal, the Court explained that if a limitation claims printed matter that is not functionally or structurally related to the physical substrate holding it, the printed matter does not hold any patentable weight. The Court stated, “[i]n performing this analysis, we do not strike out the printed matter and analyze a “new” claim, but simply do not give the printed matter any patentable weight: it may not be a basis for distinguishing prior art.” The Court held that printed matter must be claimed for what it communicates, and it is only afforded patentable weight if the claimed informational content has a functional or structural relation to the substrate. For example, the Court previously determined that a sequence of digits on a wrist band deserved patentable weight because the information of the sequence was functionally related to the physical structure of the substrate. See In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983). (printed matter not functionally related to the substrate will not distinguish the invention from the prior art ).
In this case, the Court held that the Board erred in finding that the origins of the web assets made them printed subject matter, because nothing in the claim called for the origin to be part of the web asset. Properly construed, the web assets are not exluded “printed matter” and should be considered. Accordingly, the Court vacated the Board’s finding that the DiStefano claims were anticipated by D’Arlach.