In the software arts, patent practitioners pay close attention to the wording used to describe data in the claims. For example, some may debate whether a message in a GPS app includes data identifying longitude or whether the message includes longitudinal data. These are useful debates and there are important distinctions to understand in how the claims define data, but another important concern for such labeled data, of any format, is the Printed Matter Doctrine.
If you know that doctrine, you might be wondering what in the world is has to do with software claims. Well, the answer is a lot.
The Printed Matter Doctrine is a relatively obscure doctrine that relates to whether printed text can carry patentable weight. MPEP 2111.05, titled “Functional and Nonfunctional Descriptive Material,” provides a summary (reproduced below with citations omitted) of the basic doctrine as it relates to examination before the USPTO and the ability of examiners to ignore certain claim limitations.
USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art. Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter. However, USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. The rationale behind the printed matter cases, in which, for example, written instructions are added to a known product, has been extended to method claims in which an instructional limitation is added to a method known in the art. Similar to the inquiry for products with printed matter thereon, in such method cases the relevant inquiry is whether a new and unobvious functional relationship with the known method exists.
Whenever there is a doctrine that enables the USPTO to ignore claim limitations, it is not surprising to see that doctrine expanded in scope. And here, the last sentence quoted above in the MPEP is one such important expansion that relates directly to software patents. Specifically, when drafting software patent applications, practitioner must be careful not to rely solely on limitations that can be ignored by the examiner, and this relates precisely to things like relying on a data label in software to support novelty over the prior art.
Even sophisticated applicants like Dolby can fall into this trap as we see in application 15/979,212. Dolby’s claimed invention generally relates to the processing of a received bitstream. Claim 2 is representative of the subject matter on appeal with some of the disputed limitation emphasized in underline:
2. A method for processing a bitstream through metadata
associated with the bitstream, said method comprising:
receiving multiple sections of image data as the bitstream at a destination device, wherein the bitstream is produced using a reference display device having one or more reference display device parameters, each of the multiple sections of the image data being associated with corresponding metadata;
decoding the bitstream; determining, by the destination device, if a first set of metadata associated with a particular section of the image data is received, wherein the first set of metadata includes a representation of the reference display device parameters; and determining, by the destination device, if a second set of metadata for video content characteristics of the particular section of the image data is received, the second metadata set includes at least a maximum luminance level, wherein the first set of metadata includes:
a. a white point, represented as x, y chromaticity coordinates for the reference display,
b. three primaries, each represented as x, y chromaticity coordinates for the reference display,
c. a minimum luminance level for the reference display, and
d. a maximum luminance level for the reference display, and
wherein determining if the second set of metadata is received is independent of determining if the first set of metadata is received.
Dolby argued that the cited art did not transmit the same type of metadata in that it did not represent the reference display device parameters.
The PTAB first noted that claim 2 does not ever use the contents of the first set of metadata (or the second set of metadata). The PTAB then turned to the printed matter doctrine and found that claim 2 merely claims the content of various pieces of information, where the content of the different sets of metadata is not functionally related to the sets of metadata themselves—the first and second sets of metadata each being the underlying substrate for the recited content, respectively. Moreover, the PTAB noted that the content does not change the method of claim 2 of receiving and decoding a bitstream, and determining whether two distinct sets of metadata are present. Accordingly, the contents of (i) the first set of metadata; and (ii) the second set of metadata were “merely non-functional descriptive material that do not distinguish the claims from the prior art in terms of patentability.” In other words, the nature of the information being manipulated by the computer should not be given patentable weight because there is insufficient evidence that the information is functionally related to the process in a way that changes the efficiency, accuracy, or any other characteristic of the steps.
From here, it was easy to affirm the rejection since Dolby’s arguments relied on claim elements that were now to be given no weight. Of course, the PTAB did not seem concerned that neither the examiner nor applicant had ever discussed or mentioned the printed matter doctrine during prosecution (as best as I could tell from a quick review).
It should be appreciated that relying on labels for data, in whatever form, where that data is merely transmitted or received, can open up the possibility for the examiner (or PTAB) to claim justification for ignoring such limitations.