As we have discussed in past posts (here and here for example), for software inventions, the printed matter doctrine is turning out to be a great tool to aid in examiner rejections (as if there were not enough tools already given the state of Section 101). The PTAB is also keenly aware of the doctrine and willing to apply it generously in affirming rejections. Nevertheless, there are limits.
A recent example is an application by Fox News (15/535,257) that relates to displaying thermographic characteristics within a broadcast. This enables showing hot or cold spots, to indicate whether a player is exerting themselves, and how, for example. The technology also might show whether one car’s brakes are hotter than another during race.
Claim 1:
1. A method for displaying thermographic characteristics in a sports broadcast, comprising: utilizing a camera to record a sports broadcast; determining thermographic characteristics relative to the sports broadcast; and rendering graphics in the sports broadcast displaying said thermographic characteristics.
One of the main issues in prosecution was the examiner’s citation of prior art that did not even show determining thermographic characteristics (or even discuss thermographics). According to the examiner, that was no problem at all, because the Printed Matter Doctrine means that the examiner does not need to find such features in the prior art.
The PTAB reviewed the doctrine, as well as their extension of the doctrine in Ex Parte Nell. Some of the board’s explanation is provided below:
First, the Federal Circuit has held printed matter must have a functional relationship to a substrate in order to have patentable weight, because printed matter by itself is not patentable subject matter. See In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (“printed matter by itself is not patentable subject matter, because [it is] non-statutory,” but the printed matter at issue (volumetric indicia and a legend) has patentable weight because it had a “new and unobvious functional relationship” to the claimed measuring receptacle).
Consistent with Miller, subsequent cases In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) and In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) also addressed printed matter. See King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“these ‘printed matter’ cases [Miller, Ngai and Gulack] involved the addition of printed matter, such as written instructions, to a known product”). In King Pharmaceuticals, the Federal Circuit extended the printed matter non-functional descriptive material doctrine to “a method, as opposed to a product” (“Although these ‘printed matter’ cases involved the addition of printed matter . . . to a known product, we see no principled reason for limiting their reasoning to that specific factual context. . . . Rather, we believe that the rationale underlying these cases extends to the situation presented in this case, wherein an instructional limitation is added to a method, as opposed to a product, known in the art.”). Id.
The Board then confirmed that the examiner had not established that the claimed element (determining thermographic characteristics) was non-functional descriptive matter.
So, while the Printed Matter Doctrine is a force to be reckoned with, there are limits. Here, the determination of image elements (thermographic characteristics) was more than mere non-functional printed (displayed) matter. Be careful to evaluate rejections based on this doctrine and do not let an examiner simply ignore key claim limitations if you can establish that either the limitation is not merely printed (displayed) matter, or that it has a functional relationship with other claim elements.