Federal Circuit Vacates PTAB Claim Rejection Under Printed Matter Doctrine | Practical Law

Federal Circuit Vacates PTAB Claim Rejection Under Printed Matter Doctrine | Practical Law

In In re DiStefano, the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) incorrectly determined that a patent claim limitation was not entitled to patentable weight under the printed matter doctrine, and vacated the PTAB's decision to reject the disputed claims as anticipated under 35 U.S.C. § 102.

Federal Circuit Vacates PTAB Claim Rejection Under Printed Matter Doctrine

Practical Law Legal Update w-001-0989 (Approx. 3 pages)

Federal Circuit Vacates PTAB Claim Rejection Under Printed Matter Doctrine

by Practical Law Intellectual Property & Technology
Published on 21 Dec 2015 • USA (National/Federal)
In In re DiStefano, the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) incorrectly determined that a patent claim limitation was not entitled to patentable weight under the printed matter doctrine, and vacated the PTAB's decision to reject the disputed claims as anticipated under 35 U.S.C. § 102.
On December 17, 2015, in In re DiStefano, the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) incorrectly determined that a patent claim limitation was not entitled to patentable weight under the printed matter doctrine ( (Fed. Cir. Dec. 17, 2015)). The court therefore vacated the PTAB's decision to reject the application's claims as anticipated under 35 U.S.C. § 102.
This decision involved a patent application owned by Thomas L. DiStefano, which discloses a method of designing web pages. The independent claim at issue, claim 24, claimed a method of designing a web page including the step of selecting an element from a database of web assets from third parties or otherwise provided to the user from outside the user interface (web asset origins). These web assets include, for example, Java applets, scripts, stock art, digital art, and background images, which the user can select to design a web page. The court referred to this relevant limitation as the "selecting limitation."
On remand from an earlier Federal Circuit decision, the PTAB affirmed the Patent Examiner's rejection of claim 24 as anticipated. The PTAB determined that the selecting limitation was not entitled to patentable weight under the printed matter doctrine, which states that a limitation is not entitled to patentable weight if it both:
  • Claims printed matter.
  • The printed matter is not functionally or structurally related to the physical substrate holding the printed matter.
The PTAB found that the selecting limitation was covered by the doctrine because the origins of the web assets were printed matter with no functional relationship to the claimed method. As a result, the PTAB determined that claim 24 and its dependent claim 25 were anticipated by prior art.
The Federal Circuit vacated the PTAB's anticipation rejection, ruling that the PTAB erred in determining that the web asset origins were printed matter. The court elaborated on the printed matter doctrine, stating that it requires consideration of two issues:
  • First, the limitation at issue must be directed to printed matter. A limitation is printed matter only if it claims the content of information.
  • Second, and only if the limitation in question is printed matter, it must be considered whether the printed matter nevertheless should be given patentable weight. No patentable weight should be given to the limitation if it is not functionally or structurally related to the physical substrate holding the printed matter.
The Federal Circuit found that the PTAB erred with step one because the selecting limitation in DiStefano's patent application was not directed to printed matter. The court reasoned that the selecting limitation did not claim the content of the information within the web assets, and that the origins of the information were not part of the informational content of the assets at all. The Federal Circuit therefore vacated the rejection and remanded for further findings.