Lookout Graphical User Interface Inventions - the PTAB is testing out a new way to reject claims even when the prior art is missing claimed elements.
As if Section 101 does not already provide enough ways for claims to be rejected even when novel and inventive, forces are working to open up even more avenues, including use of the printed matter doctrine. This doctrine provides for certain printed matter to fall outside the scope of patentable subject matter. Patent Docs has already highlighted the recent Federal Circuit decision (Bard) (link - here). But, not to waste any time, certain PTAB judges are already citing Bard against GUI inventions.
A recent example is Appeal 2019-005004, Application 15/966,307 (related to a GUI showing a user where a charge point was positioned on the vehicle). While this case was ultimately decided in favor of the applicant (and all rejections reversed), at least one PTAB judge wrote separately to highlight the issue of the printed matter doctrine (and provide a roadmap for examiners).
Specifically, the concurring PTAB judge first cited to Bard, which explained that the doctrine, although having “printed matter” in its title, is not so limited. From Bard (internal citations omitted):
This court and its predecessor have long recognized that certain “printed matter” falls outside the scope of patentable subject matter under U.S. patent law. While historically “printed matter” referred to claim elements that literally encompassed “printed” material, the doctrine has evolved over time to guard against attempts to monopolize the conveyance of information using any medium. Today, printed matter encompasses any information claimed for its communicative content, and the doctrine prohibits patenting such printed matter unless it is “functionally related” to its “substrate,” which encompasses the cstructural elements of the claimed invention.
In case you were worried that there would be an overly malleable test for identifying whether a claimed element is functionally related, fear not:
In evaluating the existence of a functional relationship, we have considered whether the printed matter merely informs people of the claimed information, or whether it instead interacts with the other elements of the claim to create a new functionality in a claimed device or to cause a specific action in a claimed process.
In Bard, the Federal Circuit explained that the claimed invention addressed a specific need for easy vascular access during CT imaging, and it was the radiographic marker in the claimed invention that makes the claimed port particularly useful for that purpose because the marker allows the implanted device to be readily and reliably identified via x-ray, as used during CT imaging. In the PTAB case, the concurring judge was not focused on the needs addressed by the invention, but rather focused on the function as claimed. Specifically, the concurring judge found that the only patentable "functionality" recited in claim 1 was "that a display in an electric vehicle presents information... Beyond that, the aesthetic design or visual shape of the display’s symbols merely provide communicative content of subjective meaning that does not further patentably distinguish the claim."
So, beware in GUI applications that at least some judges will be keen to apply the printed matter doctrine to fill in missing elements in Section 102 and 103 rejections.