No Patentable Weight When Claiming Content of Printed Matter

In the data processing arts, it is not uncommon for a patent examiner to disregard a limitation of a patent claim as constituting “printed matter.”  For example, if one were claiming the data structures internal to an iPod, the fact that a playlist may constitute “jazz” songs is not a patentable distinction. This is because the content of a playlist (as opposed to the functional characteristic of the actual data structures) is “printed matter” that cannot convey patentability.  

Last week, the Federal Circuit clarified the printed matter analysis in In Re: Thomas L. Distefano, III 

In explaining the proper analysis for printed matter, the Court explained (here):

The first step of the printed matter analysis is the determination that the limitation in question is in fact directed toward printed matter. Our past cases establish a necessary condition for falling into the category of printed matter: a limitation is printed matter only if it claims the content of information.                                     
 .          .          .          .    
Only if the limitation in question is determined to be printed matter does one turn to the question of whether the printed matter nevertheless should be given patentable weight. Printed matter is given such weight if the claimed informational content has a functional or structural relation to the substrate. For example, in Gulack we determined that while a sequence of digits printed on a wrist band constituted printed matter, the sequence deserved patentable weight because the informational content of the sequence (what numbers were represented) was functionally related to the endlessband physical structure of the substrate. Similarly, in In re Miller, our predecessor court determined that while the text written on a measuring vessel was printed matter, it must be given patentable weight because there was a “functional relationship between a measuring receptacle, volumetric indicia thereon indicating volume in a certain ratio to actual volume, and a legend indicating the ratio, and in our judgment the appealed claims properly define this relationship.” Thus, as we have consistently held, once it is determined that the limitation is directed to printed matter, one must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is “no” is the printed matter owed no patentable weight.

In the present case, the Federal Circuit determined that the Board erred at the threshold inquiry, that is, in establishing that the claimed feature constituted “printed matter.”  In particular, the Federal Circuit found that (1) the content of the information communicated by the claimed “web assets” is not claimed, and (2) the source of the information, or the “origin,” is not part of the informational content.