The court reversed the finding of anticipation, because the patent examiner misapplied the “printed matter doctrine.”  Under the doctrine, if a claim limitation covers the content of printed matter that is not functionally or structurally related to the physical substrate holding the printed matter, such printed matter is not given any patentable weight, i.e., it cannot be relied upon to establish patentability.  The court held that for the printed matter doctrine to apply, the printed matter must be claimed for what it communicates.  In this case, the content of the information was not claimed.  The patent examiner relied on the “origin” of the matter, but the origin is not part of the informational content at all.   Thus, the court vacated the Board’s finding that the printed matter doctrine applied and remanded for further findings. 

In re: DiStefano, III, Case No. 2015-1453 (December 17, 2015); Opinion by: Prost, joined by Taranto and Hughes; Appealed From: Patent Trial and Appeal Board.  Read the full opinion here

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