By Dennis Crouch
The printed matter doctrine probably arises less than it should as its contours are likely integral to an understanding of the patentability of software related inventions. Like the abstract idea test the doctrine barring the patentability of certain “printed matter” is nonstatutory and judicially created.
In the recent DeStefano case, the Federal Circuit vacated a PTAB anticipation decision that was based upon the printed matter doctrine — holding that the Board erred in its understanding of the test.
Distefano claims a user-directed method of designing an electronic document. The PTAB found that all of the elements of the claim were anticipated by a prior art reference except for the claimed requirement of “selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface from outside the user interface by the user.” Rather than finding that element in the prior art, the Board ruled that it should be given no patentable weight under the printed matter doctrine.
The printed matter doctrine has a long history and generally stands for the principle that no patentable weight should be given to the content of information recorded in a substrate. leading case in the area continues to be 1931 Russell decision. In Russell, the CCPA ruled that a “mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute any new and useful art.”
The Federal Circuit has ruled on several printed matter cases — holding that the content labels providing dosage instructions, instructions for performing tests, and numbers printed on a wristband were all printed matter. on the other side, the Federal Circuit ruled in Lowry that data structures themselves should not be considered printed matter if they include “information regarding physical interrelationships within a memory.”
To be clear, the question of whether or not a claim element is printed matter represents just the first step in the process. Once an element is determined to be printed matter the court must take the next step of determining whether or not it should be given patentable weight. Regarding the second step, the court writes here that the “common thread amongst all of these cases is that printed matter must be matter claimed for what it communicates.” Thus, information content can be given patentable weight if it “has a functional or structural relation to the substrate.”
Coming back to DiStefano’s case, the appellate panel here ruled that the claimed “selecting a first element” step failed the threshold question and was not itself a claim directed toward printed matter. The court writes:
Although the selected web assets can and likely do communicate some information, the content of the information is not claimed. And where the information came from, its “origin,” is not part of the informational content at all. Nothing in the claim calls for origin identification to be inserted into the content of the web asset.
Thus the case was vacated and remanded back to the patent office for another go-round. I’ll note here that this is the second time the Federal Circuit has reached a decision in this case. In its 2014 unpublished decision the Federal Circuit also rejected the board’s attempt at an anticipation rejection-that time finding that the rejection was an “new ground of rejection” that required a remand.
The claim itself appears fairly simple and straightforward, and one that is, in my guesstimate, likely directed to an idea already known. Of course, so far the patent office has been unable to find the right references and unfortunately had to really stretch the law in this one.
On remand, it will be interesting to see whether the patent office follows its usual procedure of allowing a case after a successful appeal by the applicant, or will a new search and new rejection be submitted?
My understanding is that Mr. DiStefano continues to own the patent via his Patent Trust LLC. Patents in his portfolio include US Patent Numbers 6,331,400, 6,771,291, 7,353,199, 7,996,259, 8,335,713, 8,412,570, 8,417,567, 8,423,399, 8,442,860, 8,589,222, 8,650,076, 8,768,760, 8,781,890 and 8,996,398.
= = = = =
 US patent Application No. 10/868,312, claim number 24.
 See 1 Chisum on Patents section 1.02.
 In re Russell, 48 F.2d 668, 669 (CCPA 1931)(indexing the names in directories and dictionaries).
 AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1048 (Fed. Cir. 2010); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); In re Ngai, 367 F.3d 1336, 1337–38 (Fed. Cir. 2004); and In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
 In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994).
 In re DiStefano, 562 F. App’x 984, 984 (Fed. Cir. 2014).
 The text of the claim is as follows:
A method of designing, by a user in a user interface having first and second display regions each capable of displaying a plurality of element, an electronic document, comprising:
selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user;
displaying the first element in the second display region;
interactively displaying the electronic document in the first display region;
modifying the first element displayed in the second display region upon receiving a first command to modify the first element in the second display region; and
displaying the modified first element in the first display region, wherein the modified first element forms at least part of the electronic document.
 Thomas L DeStefano III, LinkedIn biography available at https://www.linkedin.com/in/thomas-l-distefano-iii-a538811.