Printed matter (patent law)

The term printed matter, in United States patent law, refers to information associated with an article of manufacture that is claimed to distinguish an article from similar articles already in the prior art. It was long used as a basis for rejecting claims,[1] but in recent years the United States Court of Appeals for the Federal Circuit has disapproved of its use.[2]

The legal analysis of this issue speaks in terms of "printed matter" that is imprinted upon a "substrate." For example, letters might be printed on a piece of paper as substrate, in an extreme case. Or digitized information (the printed matter), such as a jpeg file representative of the Mona Lisa, might be encoded in an EPROM memory chip as substrate. A computer program (the printed matter) might be encoded in a computer-readable medium such as a hard disk (the substrate)----and thus be the subject of a so-called Beauregard claim.[3] The current legal analysis, as expressed in the definitive decision on printed matter, In re Gulack,[4] is as follows: The differences between a newly claimed substrate bearing printed matter and a prior art substrate, where the only point of departure from the prior art is in the printed matter itself, are not entitled to patentable weight unless the printed matter and the substrate have a new and unobvious functional relationship. The analysis is thus essentially an obviousness analysis under section 103 of the patent law,[5] rather than (as it was in earlier times) an analysis of statutory subject matter under what is now section 101 of the patent law.[6]

Patents of this type still issue. One example is Seagate's SeaShield patent, No. U.S. Pat. 5,732,464 (method of informing users how to configure disc drive by putting label on shield), which is claimed to provide a functional relationship between the printed information and the metal shield on which it is imprinted.

References

  1. ↑ See, for example, In re Russell, 48 F.2d 668, 669 (CCPA 1931) ("The 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, machine, manufacture, or composition of matter,' or 'any new and useful improvements thereof,' as provided in section 4886 of the Revised Statutes.").
  2. ↑ See, for example, In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (cautioning against undue use of printed-matter rejections).
  3. ↑ According to the Federal Circuit and its predecessor court, at least at one time, placing a tape or disc encoded with a new program into a general-purpose digital computer created a "new machine." In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
  4. ↑ 703 F.2d 1381, 1385 (Fed. Cir. 1983) (“the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.”); accord In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004).
  5. ↑ See In re Nuijten, 515 F.3d 1361, 1362 (Fed. Cir. 2008) (dissenting opinion of Linn, J.) ("the PTO considers the patentability of such claims under the 'printed matter' doctrine of § 103")
  6. ↑ See In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) ("printed matter by itself is not patentable subject matter, because non-statutory").
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