Unless claimed directly, origin identification does not constitute printed matter under the printed matter doctrine. Here, for example, the origin of certain web design code snippets (or “assets”) recited as being “authored by third party authors” was found not to constitute printed matter because nothing in the claim called for an identification of the “third party” origin to be inserted into the content of the web asset. “Our past cases establish a necessary condition for falling into the category of printed matter: a limitation is printed matter only if it claims the content of information.” This would be a good case to consult and cite in response to a rejection predicated on the printed matter doctrine where the limitation at issue is not claimed directly.
Background / Facts: The patent application on appeal here from rejection at the PTO is directed to a method of designing web pages. The application’s primary embodiment includes a graphical user interface that allows a user to drag and drop different “web assets” onto their website. The web assets can come from a web asset database, be uploaded directly by users, or be obtained from independent third party websites. In this regard, the claims recite selecting, from a database, web assets “authored by third party authors.”
Issue(s): Whether the selecting limitation should be afforded no patentable weight under the printed matter doctrine for claiming only the content of information without being functionally or structurally related to the physical substrate holding it.
Holding(s): No. “Although the 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 ‘origin,’ is not part of the informational content at all. Nothing in the claim calls for origin identification to be inserted into the content of the web asset. Therefore, the Board 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.”