December 17, 2015

PTAB Incorrectly Determined that Claimed Element was Printed Matter where that Matter was not Claimed for its Communicative Content

By Bryan K. Wheelock, Principal

In In re Distefano, [2015-1453] (Fed. Cir. 2015), the Federal Circuit reversed the PTAB’s affirmance of the rejection of claim 24 of Distefano’s patent application, rejecting the PTAB’s determination that “one of the limitations of independent claim 24 fell within the printed matter doctrine and therefore was not entitled to patentable weight.”

Distefano claimed a method of designing web pages.  Claim 24 required:

24. 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 [sic], 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.

The parties agreed that the  elements other than the highlighted selecting limitation were anticipated, and the PTAB refused to give the selecting limitation patentable weight under the printed matter doctrine. The Federal Circuit explained that it has consistently limited the printed matter rule to matter claimed for its communicative content.  The Federal Circuit explained that 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. The determination of whether printed matter is given such weight turns on whether the claimed informational content has a functional or structural relation to the substrate.

The Federal Circuit found that the PTAB erred in its application of the first step.  The Federal Circuit recognized that the selected web assets “can and likely do communicate some information” but found that “the content of the information is not claimed.”  Thus, it did not have to decide whether the printed matter should be give printed matter.

HOMAS L. DISTEFANO, III,