The printed matter doctrine can present problems in prosecution for various technologies, including GUIs, consumer products, etc. The doctrine
The doctrine typically is applied to text or numbers or other visual aspects meant to convey information, but do not be fooled into thinking the USPTO will stop there. A recent case on footwear shows that the USPTO can extend the doctrine even to other visual indicators, such as lights.
The case is Appeal 2022-002834, Application 16/132,665. The invention relates to an indicator for a heated article of footwear. The heating system is integrated in an inner liner and is removable. Fig. 4 from the application is reproduced below. The liner 300 is shown in phantom, with the indicator shown as 160.
Claim 21 on appeal:
21. An article of footwear, comprising:
an upper including lace receiving members configured to receive a lacing member;
a sole structure secured with respect to the upper and forming a void with the upper configured to admit a foot of a wearer;
an output system, secured to one of the upper and the sole structure, configured to impart energy on the article of footwear to change a physical property of the article of footwear, the output system including electronics and a power source operatively coupled to the electronics, the output system having a status condition indicative of an operating state of the output system; and
a visual indicator arrangement comprising a plurality of lights visible on an exterior of the article of footwear, the visual indicator operatively coupled to the electronics and the power source, the visual indicator configured to display one of a plurality of status conditions of the output system by repeatedly sequentially illuminating individual ones of the plurality of lights according to a one of a plurality of predetermined patterns, each of the plurality of predetermined patterns corresponding to one of the plurality of status conditions.
The prior art cited by the Office (Sunderland) did not repeatedly sequentially illuminate individual ones of the plurality of lights according to one of a plurality of predetermined patterns. Instead the examiner was relying the user repeatedly actuating a switch. There is nothing too surprising in this result. But while the PTAB reversed the rejection, they included this little ditty in a footnote:
Should there be further prosecution of this application, the Examiner may want to consider the applicability of the printed matter (or non-functional descriptive material) doctrine to the disputed recitation of the claims on appeal. As discussed, claim 21, for example, recites “display one of a plurality of status conditions of the output system by repeatedly sequentially illuminating individual ones of the plurality of lights according to a one of a plurality of predetermined patterns.” We query whether such display of a status condition, as recited, imparts a structural function to the output system, or merely conveys information to a user without affecting the functional operation of the output system. See In re Lowry, 32 F.3d 1579, 1583–84 (Fed. Cir. 1994). Printed matter itself is non-statutory subject matter, and accordingly, it must have a functional relationship to a physical substrate holding the printed matter in order to be given patentable weight. See, e.g., In re Miller, 418 F.2d 1392, 1396 (CCPA 1969); In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015) (The Federal Circuit has “long held that 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.”). Even if a functional relationship exists, the descriptive material must be functionally different from the prior art. That is, the functional relationship must be “new and nonobvious.” See King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
It thus is not unlikely that should prosecution continue, the examiner will make (and stick to) a new rejection with the same prior art via the printed matter doctrine.
Anytime a visual indicator’s “configured to” function is relied upon to differentiate cited art, be wary and consider the printed matter doctrine in your approach.