The Court of Appeals for the Federal Circuit, which handles patent appeals from the USPTO, has held that a database of digital art, applets and script is not “printed matter” because the patentee did not claim the communicative content and further confirmed that, to impact patentability, the printed matter must structurally or functionally relate to the to the associated physical substrate. In Re DiStephano, case no. 2015-1453 (Fed. Cir. Dec. 17, 2015) (Available Here).
The patent applicant sought to patent a graphical user interface (GUI) composed primarily of a display screen and an overlaid design plate. The plate included menu button which permitted the user to select digital assets and edit the website via a design place to display and edit the web-supplied digital assets. These web assets included applets, scripts, stock stock art and digital art from a web asset database. The web asset database is uploaded directly to the user or obtained from third-party vendors. Once the user edits the web asset, the user can drag the web asset from the design plate on to the website.
The critical claim language subject to this appeal recited: “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 of by the user.” The USPTO Patent Trial and Appeals Board refused to grant applicant a patent because this claim limitation (the selecting limitation) could not be afforded patentable weight under the “printed matter” doctrine. All the limitations in the claim were anticipated or found in a single prior art reference. The USPTO took the position that the origin of the web assets cannot be used to patentably distinguish the asserted invention form the prior art because the origin of the web assets has no functional relationship to the claimed method.
The appellate court viewed the USPTO’s decision. All factual findings are reviewed for substantial evidence and all legal conclusions are reviewed de novo.
It is well-established in case law that if a claim limitation includes (a) printed matter that (b) is not functionally or structurally related to the physical substrate holding the printed matter, the claim limitation does not lend any patentable weight to the patentability analysis. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
The appellate court then indicated that printed matter is a claim limitation only if the patent applicant claims “the content of information.” The categories of printed matter identified by the appellate court included printed material in the book form, a chart listing real estate characteristics, markings on meat, FDA labels, instructions on how to perform DNA testing, numbers printed on a wristband and computer-based structural database. With respect to the computer database, these data structures contained both information used by the application programs and information regarding their physical and relationships within a memory.
“The common thread amongst all of these cases is that printed matter must be matter claimed for what it communicates.” Printed matter is given such weight for patentability purposes if the claimed informational content has a functional or structural relation to the substrate carrying the printed matter. For example the sequence of digits printed on a wristband constituted printed matter because the informational content of the sequence was functionally related to the endless wrist band physical structure of the substrate. Further, text written on a measuring vessel was deemed to be printed matter because of the functional relationship between the printed volume indicia and the ratio actual volume of liquid in the vessel.
“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 structural structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight.”
In the case at bar, the USPTO inaccurately found that the database of web assets was claimed for what it communicates. This was an error. The digital asset database was not claimed based on the content of information in the database. The USPTO’s analysis regarding the origin of the digital asset was improper.