Grüneberg and Myers - Intellectual Property Law


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Interpreting Mental Steps Under the Printed Matter Doctrine

Printed matter lacking a functional relationship to other claim limitations reduced claim limitations comprising providing information, evaluating and recommendation to be either printed matter or purely metal steps which are not entitled to patentable weight, in a method of providing nitric oxide gas.  In Praxair Distrib., Inc. v. Mallincrodt Hosp. Prods. the Fed. Cir. affirmed the PTAB’s invocation of the printed matter doctrine when interpreting the claim.  The Fed. Cir. noted that the printed matter doctrine raises an issue where the 101 patent-eligibility inquiry and the 102/103 novelty and nonobviousness inquiries overlap.  Evidence of secondary considerations were found to be based on the information claimed in the providing information limitation, which lacked any functional relationship to the non-printed matter limitation.  In her concurrence Judge Newman disagreed with the application of the printed matter doctrine and noted the creation of a new printed matter doctrine in today’s jurisprudence serves no purpose other than adding to the uncertainty of patent eligibility.

Richard Chinn