Digest of In re: Thomas Distefano, III, No. 2015-1453 (Fed. Cir. Dec. 17, 2015) (precedential). On Appeal from P.T.A.B. Before Prost, Taranto and Hughes.

Procedural Posture: Board rejected application claims for anticipation, applying the “printed matter doctrine.” Patent applicant appealed, and CAFC vacated and remanded.

  • Printed Matter Doctrine: If a limitation claims (a) printed matter that (b) is not functionally or structurally related to the physical substrate holding the printed matter, it does not lend any patentable weight to the patentability analysis. However, a limitation is printed matter only if it claims the content of information. Here, the claimed method of designing web pages included a step of selecting “web assets” authored by third party authors. Although these 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 “origins” (which the Board mainly pointed to in its analysis) is not part of the informational content at all. The Board therefore erred in finding that the origin of the web assets constituted printed matter in the claims at issue and erred in assigning the origin no patentable weight under the printed matter doctrine.